In aspect just one of this two-aspect series, we discussed the standard approach when submitting a non-use cancellation, and the ways you can just take to improve your odds of good results. In this concluding second aspect, we’ll explore the timing of non-cancellation filings, and a distinct approach when working with a trademark squatter.
Unless of course inspired by spite, people today file non-use cancellations to reduce logos that stand in the way of their personal trademark applications. They do so at just one of two instances: just before submitting an software (to reduce prospective hurdles) and following their software has been rejected (to reduce cited hurdles).
In an perfect earth, you would connection a cancellation to a trademark software so that the CTMO examiner (or TRAB panel, as the case might be) would note the linkage and suspend their endeavours until eventually the cancellation was made a decision. But we do not dwell in an perfect earth, and the CTMO does not suspend examinations or appeals until eventually cancellations are made a decision. As a substitute, you have to work out the timing oneself and play the odds that the non-use cancellation will be made a decision to start with.
It is an inexact science. If you are attractive a rejection, the window to file an attraction is so shorter that you have tiny choice but to file the attraction and non-use cancellation at the exact same time. But if you haven’t filed an software however, the most effective way to make sure that the cancellation will be made a decision to start with is to file the non-use cancellation, wait a couple of months, and then file an software. Really do not wait much too long, although: at the time the trademark operator has been notified (generally inside of 2-3 months of submitting the non-use cancellation), they could file their personal (new) software. Lots of candidates really don’t hassle hoping to video game the process they file a non-use cancellation and a trademark software at the exact same time, and if they are unfortunate sufficient to have the software examined to start with, they just file an attraction, safe in the knowledge that the cancellation will surely be made a decision just before the attraction is.
Filing a non-use cancellation from a trademark squatter has some distinctive difficulties. Lots of trademark squatters never ever use the mark in commerce: their sole purpose is to monetize the trademark by offering it to the “real” trademark operator, or to the best bidder on the secondary sector.
A canny trademark squatter might just take a few steps to foreclose the possibility of a non-use cancellation. Initial, they could sell a handful of supposedly branded products to a buddy or colleague by way of e-commerce, so satisfying the use in commerce requirement.
If the trademark is especially beneficial, or the trademark squatter especially canny, a couple of branded products will be bought on the web to foreclose the possibility of a non-use cancellation. But this is quite scarce.
This generates an prospect for the “real” trademark operator. With a trademark squatter, the registration will not even be vulnerable to a non-use cancellation until eventually 3 yrs following the registration day. And if the squatter is intent on maintaining those trademark legal rights, they’ll file yet another, similar software just before the a few-yr time period is up, thereby preserving their legal rights even if the to start with registration is cancelled.
But two can play that video game. The actual trademark operator could file to start with – even just before the a few yr time period is up – and then file a non-use cancellation particularly a few yrs following registration. Sure, the software will most likely be rejected at to start with since it’ll be made a decision just before the cancellation, but then you can file an attraction, and the cancellation ought to be complete by the time the attraction is made a decision. This approach will take time to execute, and it is not without threats. (What if the trademark squatter filed a new software just before you? What if the cancellation fails since the trademark squatter basically had utilized the mark in commerce?) But if it functions, you can retrieve the mark at a considerably lower cost, without involving the courts, and without obtaining to fork out off a trademark squatter. Alternately, you could use the pending filings as leverage to negotiate a lower rate from the trademark squatter.
Yes, it would be nice if China supplied recourse from trademark squatters by more clear-cut usually means: namely, by trademark oppositions (for pending applications) and invalidations (for existing registrations). Probably that day will come, but for now hoping to just take on trademark squatters head-on is a loser’s video game. The way to defeat them is by applying the Chinese trademark process from them.
Needless to say, this approach is predicated on the assumption that the trademark squatter has not utilized the mark in commerce. The more research you can do just before submitting a non-use cancellation, the far better. Due to the fact if the squatter has in fact utilized the mark this sort of that they can defeat a non-use cancellation, they’ll most likely improve the sale rate, figuring that you will have to genuinely want the trademark.