When you register your trademark in the United States through the Madrid Protocol (via a Request for Extension of Protection at WIPO), you have the advantage that you are not required to show use of your mark in commerce in the United States before you trademark can be registered.
But what if you still haven’t used your trademark several years after completing your U.S. trademark registration? Is your registration in danger of being cancelled?
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There are really two questions here:
1. Will the USPTO cancel your trademark registration?
2. Can another company cause your trademark registration to be cancelled?
Cancellation by the U.S. Patent and Trademark Office
For question 1, the answer is simple: the USPTO will not take any action against your trademark unless you fail to submit evidence of using your trademark in the United States at the required time.
What is the required time to show use of your trademark in the U.S.? All U.S. trademark registrations–under the Madrid Protocol or otherwise–must submit a Statement of Use no later than the sixth anniversary after the date of U.S. registration. (Actually, 6 1/2 years if you pay an extra fee for being late.) The fifth anniversary of the registration date is the earliest date when the Statement of Use can be submitted. Remember that these dates are measured from the date of registration, not the date of application as in many countries.
A Statement of Use includes two things: 1) An affidavit (a legally binding statement) that you are using the mark in connection with all goods and services listed in the trademark registration (you can delete some items if needed); and 2) a specimen of use showing the mark on the goods or services. This is normally a photograph of your products that shows the mark, or a website or advertisement for services.
If the trademark has not been used by the deadline, you can submit a statement of excusable non-use, but this is rarely possible. That is, the USPTO will rarely excuse you from the requirement to use your mark by the 6th anniversary deadline. For example, if you were selling medical products and the U.S. Food and Drug Administration had not yet approved your products, then this would be excusable non-use. But in most cases, you must have used your trademark by the 6-year deadline.
If you do not file the required affidavit and specimen showing the mark as it is used in the U.S., then the U.S.P.T.O. will cancel your trademark registration. It cannot be revived. If this happens, you’ll need to file a new application.
Cancellation by Another Company
For question 2, the answer is more complex.
Another company can always try to cancel your trademark. One of the reasons they can give for seeking a cancellation is that you are not using your trademark–that it has been “abandoned.” It will be easier for them to succeed if you have not used your trademark in the U.S. for 3 years or more after your registration issues.
Your trademark is always a little vulnerable when it has not been used. But you can always say that you plan to use it. The problem is that after 3 years of not using your trademark, another company can ask the court to “assume” that your trademark has been abandoned for non-use. In that case, you have the responsibility (the legal burden of proof) to show that you really are planning to use your trademark in the U.S. and you have not abandoned it. You could show this by providing, for example, copies of letters with potential distributors to show that you are working to get your services offered in the U.S.
It’s unusual for someone to try to cancel your trademark unless they have applied to register a similar trademark and they have been blocked because of your trademark registration. In that case, they might try to find a way to cancel your trademark, and if you have not used your trademark yet, this could be a basis for their Petition to Cancel your registration. But if you have been making efforts to use your trademark, it normally cannot be cancelled unless the 6 years have passed (item 1, above). If you have evidence of trying to create sales in the US, normally the other side will see that they will not win the cancellation, and so the matter can be settled.
In summary, before the sixth year after the date that your trademark was registered in the U.S., there is a small risk from other companies seeking to cancel your trademark registration if you haven’t yet used your trademark. But if you have been working to develop sales in the U.S., the chance that another company could win is very small. However, after the six-year anniversary, you must have started to use the mark in the U.S. and turn in the appropriate documents, or the U.S.P.T.O. will cancel your registration, even if no other companies are involved.