Failing to Update USPTO Records May Result in Cancellation

Unwary registrants may lose valuable U.S. rights due to recent USPTO changes. This year new rules came into effect for the Trademark Trial and Appeal Board ("TTAB"), the entity within the USPTO that decides cancellations and oppositions. One rule change is that cancellation papers are now served on the registrant by the petitioner's attorney rather than the TTAB.

To satisfy proper service, one must only send a copy of the cancellation papers via regular mail to the owners' address of record or to that of the domestic representative, if one was appointed. Note that the USPTO views an attorney's representation to end upon registration. This means cancellation papers need not be sent to the attorney who served as counsel during the application's prosecution. As a result, only clients who promptly record assignments and update any address changes will receive notice of cancellations instituted against their registrations. If the client has chosen not to record assignments or changes of address (for example, by waiting until renewal), it may never receive notice of the cancellation. This could result in a default judgment and loss of the registration.

To insure clients receive prompt notice of cancellation actions instituted against their registrations, we recommend the following:

  • Record all assignments promptly (an additional reason to do so is the protection it provides against subsequent purchasers*).
  • Update all addresses promptly.
  • Appoint a domestic representative. International Registration extensions of protection into the United States do not automatically appoint a domestic representative. You must ask a U.S. firm to serve in that capacity.

Lewis and Roca can help your clients ensure their U.S. records are up to date so as to avoid inadvertent loss of rights.

* An assignment is void against any person who subsequently purchases a trademark for value without notice of the prior assignment unless the prior assignment is recorded with the USPTO within three (3) months after the date of the assignment or prior to the subsequent purchase. For this reason, we recommend prompt recordation of all assignments.

This Client Alert has been prepared by Lewis and Roca LLP for informational purposes only and is not legal advice. Readers should seek professional legal advice on matters involving these issues.

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