Document Type
Article
Publication Date
January 2010
Abstract
This article questions why some courts that have already found a federally registered trademark invalid refuse to cancel the registration despite having the authority to do so under § 37 of the Lanham Act. Examination of cases involving judicial cancellations reveals that a failure to assert cancellation as a claim, as opposed to a variety of other methods of requesting cancellation, is the reason courts refuse to exercise their power under § 37 - referred to as the missing-claim rule. This article criticizes the missing-claim rule as illogical and frustrating trademark law's purpose and proposes the missing-claim rule be abolished, that courts should invoke their power under § 37 sua sponte, and that on appeal, a failure to cancel under § 37 when invalidity has been established would be considered a per se abuse of discretion. These proposals complement trademark law's underlying policy, appropriately balance the burdens on the courts and U.S. Patent & Trademark Office, and do not present the typical objections to sua sponte action. In addition, these proposals can be adopted without amending the text of § 37, although an amendment is suggested if the courts refuse to adopt such practices.
Publication Title
Texas Intellectual Property Law Journal
First Page
297
Last Page
332
Recommended Citation
18 Tex. Intell. Prop. L.J. 297 (2010).