Model State Trademark LawCancellation

Section § 14230

Explanation

This law details when the secretary can cancel a trademark registration. Cancellations can occur if the registrant asks for it, the registration isn't renewed, or if a court finds problems like abandonment, fraud, or the mark becoming generic. It can also happen if a registration was mistakenly granted, a payment issue arises, or the mark causes confusion with an existing trademark. Importantly, cancellation won't occur if the registrant holds a concurrent registration that includes the state. Lastly, the secretary can cancel a mistakenly issued registration within six months.

The secretary shall cancel from the register, in whole or in part, any of the following:
(a)CA Business & Professions Code § 14230(a) Any registration concerning which the secretary receives a voluntary request for cancellation from the registrant or the assignee of record.
(b)CA Business & Professions Code § 14230(b) All registrations granted under this chapter and not renewed in accordance with the provisions of this chapter.
(c)CA Business & Professions Code § 14230(c) Any registration concerning a mark with regard to which a court of competent jurisdiction finds any of the following:
(1)CA Business & Professions Code § 14230(c)(1) The registered mark has been abandoned.
(2)CA Business & Professions Code § 14230(c)(2) The registrant is not the owner of the mark.
(3)CA Business & Professions Code § 14230(c)(3) The registration was granted improperly.
(4)CA Business & Professions Code § 14230(c)(4) The registration was obtained fraudulently.
(5)CA Business & Professions Code § 14230(c)(5) The mark is or has become the generic name for the goods or services, or a portion thereof, for which it has been registered.
(6)CA Business & Professions Code § 14230(c)(6) The registered mark is so similar to a mark registered by another person in the United States Patent and Trademark Office prior to the date of the filing of the application for registration by the registrant hereunder, and not abandoned, as to be likely to cause confusion or mistake, or to deceive. However, should the registrant prove that the registrant is the owner of a concurrent registration of a mark in the United States Patent and Trademark Office covering an area including this state, the registration hereunder shall not be canceled for that area of the state.
(d)CA Business & Professions Code § 14230(d) Cancellation of a registration ordered on any ground by a court of competent jurisdiction.
(e)CA Business & Professions Code § 14230(e) Any registration or renewal if a check or other remittance accepted in payment of the filing fee is not paid upon presentation. The secretary shall give written notice of the applicability of this subdivision to the registrant. Thereafter, 30 days shall be allowed from the date of the notification letter for payment by cashier’s check or the equivalent.
(f)CA Business & Professions Code § 14230(f) Within six months of the date of registration, any registration issued in error by the secretary that violates the requirements of subdivision (f) of Section 14205.
trademark cancellation registrant voluntary request renewal failure