Surrendering a Trademark Registration: Process, Effects and Alternatives

What surrender means in law

Section 7(e) of the Lanham Act says that, on the owner's application, the Director may permit any registration to be surrendered for cancellation, and that the cancellation is then entered in USPTO records (15 U.S.C. §1057(e)). The USPTO rule, 37 CFR 2.172, adds who may sign. The owner can sign, as can a person with legal authority to bind the owner, such as a corporate officer, or a practitioner qualified under 37 CFR 11.14.

The same rule says that a surrender for cancellation may not subsequently be withdrawn. Treat it as final. The earlier post called it irreversible, and the rule confirms that.

The process when no cancellation case is pending

TMEP §1608 describes the process for an ordinary registration:

1. The owner submits the Surrender of Registration for Cancellation form in the USPTO's trademark electronic filing system, signed as TMEP §611.03(f) describes. Electronic filing is required unless the owner is a national of a country that is exempt from the requirement.
2. There is no fee. The USPTO fee schedule lists no surrender fee and TMEP §1608 states 'There is no fee'.
3. The Post Registration Section handles the request, unless the registration is the subject of a cancellation proceeding before the Trademark Trial and Appeal Board.
4. If the whole registration is surrendered, the USPTO updates its records and sends the owner of record a notice that the registration is cancelled. The earlier post said this notice arrives within a few days. TMEP §1608 sets no time, so that claim was removed.

Whole classes, partial deletions and Madrid registrations

A multi-class registration may have one or more entire classes surrendered while the rest stays alive. If the owner wants to delete only some goods or services in one class, that is an amendment under 37 CFR 2.173, not a surrender (37 CFR 2.172). The USPTO fee schedule shows no charge for deleting goods or classes from a registration before a Section 8 declaration is filed.

A related rule applies at maintenance: if a Section 8, Section 71 or Section 9 filing covers fewer than all the classes in the registration, the omitted classes are treated as surrendered (TMEP §1608). A registered extension of protection from an international registration can be surrendered either at the International Bureau or at the USPTO, and the USPTO then tells the International Bureau.

When a cancellation proceeding is pending

After a cancellation proceeding has begun, the rule is different. If the respondent applies to cancel the involved registration under Section 7(e) without the written consent of every adverse party, the Board enters judgment against the respondent (37 CFR 2.134(a)). Consent may be signed by the adverse party or its attorney or authorized representative. The earlier post said such a judgment 'would preclude' future registration of the same or similar mark for related goods. The rule text does not say that, so this guide does not repeat it. Ask an attorney what the judgment may mean for later filings.

Letting the registration lapse during the case is not a way around the rule. If the registrant allows the registration to be cancelled under Section 8 or Section 71, or fails to renew it under Section 9, the Board may order the registrant to show cause why that should not count as a cancellation without consent (37 CFR 2.134(b)). TMEP §1608 refers to the Board's manual, TBMP §602.02(a), for voluntary surrender in a Board proceeding. That manual section was not opened for this guide, so the Board's filing steps are not described here.

What you lose and what you keep

The loss is the registration itself. You can no longer use ® with the mark, because the symbol may be used only with a mark that is actually registered (TMEP §906). The presumptions of validity and ownership in 15 U.S.C. §1057(b), the constructive-use priority in §1057(c) and the constructive notice in §1072 all come from the registration. They end when it is cancelled.

What stays is whatever your use created. The USPTO says that you become the owner of a trademark when you start using it, and that rights from use are limited to the area where you provide your goods or services. Those rights depend on continued use. Under 15 U.S.C. §1127, a mark is abandoned when use stops with intent not to resume, and three consecutive years of nonuse is prima facie evidence of abandonment. A surrender is public: cancelled records stay in the database, so searchers will see that the registration is dead.

Alternatives to consider before surrendering

A surrender is not the only route when a mark is no longer wanted or is partly in use:

• Delete only the goods or services you no longer use. This is an amendment, not a surrender, and avoids a false claim of use at the next maintenance filing.
• Surrender only some classes. The remaining classes stay registered.
• Let the registration lapse at the deadline. Section 8 and Section 9 deadlines have a six-month grace period with a surcharge. After that the registration is cancelled or expires. If the owner wants the record changed sooner, TMEP §1611 says to file the surrender form to expedite the cancellation or expiration.
• Keep the registration if you will use the mark again. A new application would receive a new filing date and a fresh examination, with the risk of new conflicts.