Question:
If a trademark application is refused because of earlier identical or similar marks, can the applicant overcome those citations by requesting non-use cancellation while seeking refusal review before the Trademark Review and Adjudication Board (TRAB)?
Answer:
Yes. Non-use cancellation requests may be filed against the cited marks at the same time as the review request, and this approach has succeeded in many cases. However, timing has become a concern.
Decisions from late 2016 show that TRAB does not necessarily wait for the cancellation result and may decide the review according to its own timetable. The review and cancellation procedures take broadly similar amounts of time, so a cancellation filed together with a review may be decided only after the review. The application may therefore remain refused because the cited mark is still valid when TRAB decides the case.
Applicants should consider acting earlier, for example by requesting non-use cancellation during the trademark search stage against marks likely to be cited.