WHERE ARE YOU?

The importance of keeping an owner address current
with the U.S. Patent and Trademark Office

In 2007, new rules were issued that could jeopardize a trademark owner’s trademark rights if its address on file with the U.S. Patent and Trademark Office (“USPTO”) is incorrect or out of date.

The USPTO’s Trademark Trial and Appeal Board (the “Board”) rules now require that Petitions for Cancellation of trademark registrations be served directly on the owner of the registration as listed in the records of the USPTO.  (If a domestic representative has been appointed for non-U.S. owners, the Petition may be served on that representative.)  The party filing the Petition is not required to serve an attorney who may have been listed as representing the owner of the registration during prosecution of the application or for maintenance filings.

If a Petition is returned as undeliverable, the filing party is to notify the Board and include any new address information known to the filing party.  However, the filing party is not obligated to proactively seek out a new address for the owner of the registration.  If the filing party indicates that the party to be served is out of business, notice of the Petition for Cancellation will be published in the USPTO’s Official Gazette.  Otherwise, the Board should make reasonable efforts to locate the owner of the registration at issue, but if the Board is unable to locate the party, notice of the Petition for Cancellation will be published in the Official Gazette.

When notice of a Petition for Cancellation is published in the Official Gazette, the owner of the opposed registration is given 30 days from publication to appear in the proceeding.  If no appearance is made within the 30 days, a default judgment may be entered against the owner of the registration, resulting in the loss of valuable trademark rights.  Once a registration is cancelled, the owner of the trademark will have virtually no ability to have the registration reinstated.  The only recourse will be for the owner of the trademark to file a fresh application.

Thus, it is more important than ever for trademark owners to keep their address on file with the USPTO up to date for all applications and registrations.

Should you have any questions, please contact:

                                                        Gabrielle A. Holley                           James R. Menker

                                                        858.353.9285                                   571.278.3366

                                                        gholley@holleymenker.com             jmenker@holleymenker.com

The foregoing is for informational purposes only and does not constitute legal advice.