TMEP 1608: Surrender of Registration for Cancellation

October 2017 Edition of the TMEP

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1608    Surrender of Registration for Cancellation

The owner of a registration may voluntarily surrender his or her registration for cancellation, under §7(e) of the Trademark Act, 15 U.S.C. §1057(e).  There is no fee.

A request to surrender a registration must be signed by the individual owner, someone with legal authority to bind the owner (e.g., a corporate officer or general partner of a partnership), or a qualified practitioner. 37 C.F.R. §2.172.  In the case of joint owners who are not represented by a qualified practitioner, all must sign. 37 C.F.R. §2.193(e)(6).

Filing a §8 affidavit or declaration, §71 affidavit or declaration, or §9 renewal application for fewer than the total number of classes in the registration is regarded as a surrender of the registration as to the class(es) that are omitted.

Unless the registration is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board, a request for surrender is handled by the Post Registration Section.  See TBMP §602.02(a)  as to the voluntary surrender of a registration that is the subject of a cancellation proceeding before the Board; see also Christiane E, LLC v. Int’l Expeditions, Inc., 106 USPQ2d 2042 (TTAB 2013) (finding that registrant’s situation was not so extraordinary as to warrant a withdrawal of registrant's voluntary surrender of its registration).

If the registration is surrendered in its entirety, the USPTO updates its records accordingly, and sends the owner of record a notice that the registration is cancelled.

If fewer than all classes are surrendered, the USPTO enters a notation in the record, and updates the Trademark database to indicate that specified classes have been cancelled under §7(e) of the Act. A certified copy of the updated registration certificate may be obtained from the Document Services Branch of the Public Records Division for a fee. See TMEP §111.

A request to surrender a registered extension of protection of an international registration to the United States may be filed either directly with the IB or with the USPTO.  If it is filed with the USPTO, the USPTO will notify the IB of the cancellation of the request for extension of protection to the United States.  See TMEP §§1906.01 et seq. regarding requests to record changes at the IB, and TMEP §1906.01(e) regarding renunciation, limitation, or cancellation of an international registration.

Under 37 C.F.R. §2.172, a surrender for cancellation may not subsequently be withdrawn.