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Trademark Cancellation: How do dates work with the uspto?

Los Angeles, CA |

It says my deadline to respond is February 20th. Does that mean I have until February 19th or the end of the business day on February 20th to reply?
Also, eventually, if I attempt to depose someone on their side(with written questions), do I have to compensate them for that? How far can I defend myself without crucially needing to hire an attorney? This is for a trademark case before the uspto (no infringement, rather a cancellation request).

If you are going to answer, please, please explain the dates confusion.

Attorney Answers 8

Posted

I would recommend that you hire an attorney without delay. Even filing an answer is not something that you can adequately do yourself. You have three weeks to hire an attorney and have him or her file an answer on your behalf. That gives you plenty of time, but you must act quickly. Do a search on Avvo for trademark attorneys and start calling them for consultations.

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2 comments

Asker

Posted

Thank you Bahram. I will ultimately end up hiring an attorney. Can you please answer my question on how dates work though? This would help me.

Bruce E. Burdick

Bruce E. Burdick

Posted

You will ultimately lose if you do not hire one NOW, I think. And do you HAVE to file a response to the Petition for Cancellation?

Posted

Cancelling a trademark or defending against someone's attempt to cancel your TM isn't a DIY job. If your TM is important to you, then yes, a lawyer is crucial, and I'm guessing you won't be able to defend your TM much without one. You're already pushing your deadline, so hire someone fast.

Avvo doesn't pay us for these responses, and I'm not your lawyer just because I answer this question or respond to any follow-up comments. If you want to hire me, please contact me. Otherwise, please don't expect a further response. We need an actual written agreement to form an attorney-client relationship. I'm only licensed in CA and you shouldn't rely on this answer, since each state has different laws, each situation is fact specific, and it's impossible to evaluate a legal problem without a comprehensive consultation and review of all the facts and documents at issue.

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Asker

Posted

Pamela. Why do you tease me. Can you explain how the dates work please. I know I wil hire an attorney. It would be good for me to know how the dates work regardless.

Pamela Koslyn

Pamela Koslyn

Posted

http://www.uspto.gov/trademarks/process/appeal/Preface_TBMP.jsp

Asker

Posted

Pamela, thank you so much. That only looks like 100000 pages of information which I'm sure you know backwards and forewards. I just want to know if the stated deadline means we have until the end of the stated day or the day before the stated deadline. :)

Pamela Koslyn

Pamela Koslyn

Posted

I'm trying to teach you to fish, asker. This won't be your only question. Or at least it shouldn't be. Start getting familiar with this manual. And use the table of contents so it isn't as scary as you obviously find it.

Asker

Posted

Pamela, your words are encouraging. You are right, do deem the depth of experience and knowledge your kind hold and was put off by knowing that the link you sent me to was only a fraction of what a good lawer knows. I didn't think I could find that specific information because it is such detailed. I always wondered what people meant by the deadline is x date. I know if a store closes at 5:00 you can no go in at 5. But I guess if a trial date is set to close on the 20th, you can still submit on the 20th. Thank you Gene Bomarcich.

Asker

Posted

*You are right, I do deem the depth of experience and knowledge your kind hold scary...

Bruce E. Burdick

Bruce E. Burdick

Posted

A fool and his trademark are soon parted. Don't be a fool. Don't ask us, get an attorney and ask her.

Posted

The deadline refers to close of business on that date. I strongly suggest looking for an experienced trademark attorney.

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Asker

Posted

Thank you so much.

Bruce E. Burdick

Bruce E. Burdick

Posted

Now that proves the point. You just thanked a wrong answer. You have until midnight on the 20th, and that is EST, not just until close of business. A fool and his trademark are soon parted.

Bruce E. Burdick

Bruce E. Burdick

Posted

Do you even have to file a response, Asker?

Gene Bolmarcich

Gene Bolmarcich

Posted

Midnight is close of business on that date for the USPTo since the USPTO does business online 24/7. Once again, you are the epitome of obnoxiousness.

Bruce E. Burdick

Bruce E. Burdick

Posted

Would have been nice if you had stated that first sentence (although it is also misleading due to omission of FAX, which is also 24/7 and Express Mail for which close of USPS business not close of USPTO business) instead of the misleading [due to lack of specificity] one you first used. As to the second, erroneous answerers do tend to think me obnoxious when I point out their errors. If it makes you post more accurately, I will suffer the unbearable burden (LOL) of you thinking me obnoxious. After 40 years of legal practice I have an incredibly thick skin to name callers.

Posted

For electronic filing, you have until midnight (Eastern time) on February 20. If you are in Los Angeles, California, that would be 9 pm (Pacific time). I would not recommend that you retain a trademark attorney as soon as possible. It is often more difficult and expensive to fix problems later instead of avoiding them in the first place (and you are more likely to make those mistakes if you do not hire an attorney).

This answer is for informational purposes only. It is not intended as specific legal advice regarding your question. The answer could be different if all of the facts were known. This answer does not establish an attorney-client relationship.

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James Juo

James Juo

Posted

CORRECTION: "I would recommend that you retain a trademark attorney as soon as possible." The "not" in the original was a typo!

Bruce E. Burdick

Bruce E. Burdick

Posted

Or, is there any deadline? Do you even have to file a response? What do the FRCP and TTAB rules say the Board assumes if you fail to respond. Do they assume you admit or do they assume you deny? We know, but do you, Asker? And, Asker where will you look to find out? Better get crackin'. You have a deadline loom'n! And this is one of the more simple tasks, it gets more complex from there on.

Bruce E. Burdick

Bruce E. Burdick

Posted

And Asker, it isn't but what if 2012-02-20 was on a Sunday? Would you need to file by close of business Friday the 18th? Or midnight Friday the 18th, or close of business on the 19th (Sat.)? Midnight Sat? Close of business on Sun the 20th? Midnight Sun the 20th, before business opens (and when is that?) the next business day Mon 21st, or close of business on Mon 21st or midnight on the 21st? A trial lawyer knows the answer instinctively due to years and years of filing pleadings. And, can you fax it? email it? electronically file it using some procedure? What procedure? Do you get more time if you mail it? Fax it? Email it? Electronically file it? And that's just the most basic of procedural questions. What about the legal substance of what you file. What is the current state of the law on whatever grounds of cancellation are alleged? Do you even know what grounds are being alleged? Can you get an extension? How? After the deadline passes? Would you have to call the other attorney (not wouldn't you be comfortable doing that?) and what extension could you reasonably ask for? Would the response likely be favorable or unfavorable? Would it matter? For heaven's sake, quit jerking yourself around dilusionally and get a lawyer, NOW. By the way Pamela or James or Daniel are each experienced, would each be great and each know the answers (or where to find them) to all these questions.

Posted

Your two questions make it clear you do not have the ability to handle this problem.

Nor should you expect to. Court and agency procedures are structured so a given trial or appeal will take the least possible time of the judge(s). Period. They are not set up to accommodate amateurs who wander onto the field. Just because you were able to handle speeding court or red light court—which often does accommodate amateurs—is no guide.

And what is worse, you also do not know the substantive rules of the proof needed to knock off an existing mark, such as yours. They are also intricate, although that is because they have been highly polished over some 400 years of trademark law by lawyers vying to gain advantage for their clients by emphasizing tiny distinctions.

So, if you value the mark someone is trying to cancel you will spend money for a lawyer to protect it, or not.

Licensed in Maryland with offices in Maryland and Oregon. Information here is general, does not create a lawyer-client relationship, and is not a substitute for consulting with an experienced attorney on the specifics of your situation.

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Posted

To get a sense of how a Trademark Trial and Appeal Board proceeding will play out you should peruse its 2100 page Manual of Procedure [visit the link below]. Because that Manual incorporates large parts of the Federal Rules of Civil Procedure [including discovery] you should familiarize yourself with those rules as well [visit the other link below]. And then you should conclude that you have NO possibility of prevailing in the proceeding unless you hire a trademark attorney. If your trademark is important to your business you have no choice. And if it's not then your own attorney may be able to persuade the plaintiff in the proceeding to buy it. In short, hire a trademark attorney.

The above is general information ONLY and is not legal advice, does not form an attorney-client relationship, and should NOT be relied upon to take or refrain from taking any action. I am not your attorney. You should seek the advice of competent counsel before taking any action related to your inquiry.

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3 comments

Bruce E. Burdick

Bruce E. Burdick

Posted

And, that's just to get the PROCEDURE understood. You will also need to learn trademark law so you know what arguments to make and not make so you will want to buy a treatise, even if just a basic one like http://www.pli.edu/Content/Treatise/Kane_on_Trademark_Law_A_Practitioners_Guide/_/N-4lZ1z13ign?ID=38144 and you will need to recognize that your opponent's lawyer will likely have knowledge sufficient that he or she could write such a book and will know the precise issues of law of importance in your cancellation. Have about 3 days to learn all this procedure and law, as you need to get crackin' pon that foolish response you plan to pro se file. Don't expect to hire one of us on Feb. 19th when you give up in frustration! It will cost you 3 times as much then. And once you file the response pro se and the other side moves for summary judgment, you may very well have committed enough blunders that you will be beyond saving. I hope we insult you enough to make you mad as hell. That way you will be prepared for when you lose. You can blame us for your lose, since it surely must have been our fault not your fault because you were right and should have won and the lawyers and judges were corrupt and out to get you, right? The real answer to when the deadline for YOU to respond is that there is NO deadline to respond since you do not HAVE to respond. In fact, if you are stupid enough to be pro se you would perhaps be better off making no response. Under TTAB rules, no response is taken as a complete denial. The more practical answer, is that it does not matter, because if YOU respond your case is probably down the drain anyway.

Daniel Nathan Ballard

Daniel Nathan Ballard

Posted

There is such a thing as too much emphasis.

Asker

Posted

"So your saying I have a chance?" - Dumb and Dumber

Posted

You are too far along already if you have not attorney. You needed an attorney at the outset. MAJOR MISTAKE on your part. Get one pronto or plan to lose.

I sounds like you are registrant and someone seeks to cancel your registration and now you have to respond to the Petition for Cancellation. Feb 20 means by midnight Feb 20 Eastern time.

Deposing with written questions by a layman is one of the dumber things you could do.

How far. NO FURTHER. You need an attorney to respond. You are in over your head. If you respond you will screw this up for sure.

That you think you have to tell us a Cancellation is before the PTO and no infringement tells us you are a complete novice. Every TM attorney here knows a Cancellation is at the PTO and every TM attorney knows better than to just accept as face value your statement "no infringement." If you are the registrant, "no infringement" is a foolish thing to say, until you are absolutely sure. Often a Cancellation results from an applicant trying to overcome a 2(d) rejection for likelihood of confusion. If that is your situation, you sure don't want to be saying "no infringement." Errors like that are commonplace by pro se litigants since they generally have a fool for a client and a fool for a lawyer. Don't be a fool, get a lawyer NOW.

I am not your lawyer and you are not my client. Free advice here is without recourse and any reliance thereupon is at your sole risk. This is done without compensation as a free public service. I am licensed in IL, MO, TX and I am a Reg. Pat. Atty. so advice in any other jurisdiction is strictly general advice and should be confirmed with an attorney licensed in that jurisdiction.

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Bruce E. Burdick

Bruce E. Burdick

Posted

Do you even have to respond? Should you? How? Do you provide evidence when you respond? Do you make legal arguments when you respond? Get the point? The deadline is only scratching the surface of the questions your "lawyer" will need to address. You should already be charged with the unauthorized practice of law, but you have the right to be your own lawyer and lose the Cancellation.

Bruce E. Burdick

Bruce E. Burdick

Posted

What are affirmative defenses? Counterclaims? Are they compulsory? What if anything must they cover? What's the next step after you "respond"? Is jurisdiction an issue? What statutes apply? What is incontestability and does it apply? If it does what does it mean? And ARE YOU DILUSIONAL?

Posted

The question really is, "How much do I value my trademark?" Take that question and the answer you come up with, and balance it to the risk you want to take representing yourself. If the value outweighs your risk threshold for a particular part of this process, hire an attorney right away.

good luck

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