§1116. Cancellation.

(a) General rule.--The department shall cancel from the register under this chapter:

(1) All registrations under this chapter which are not renewed in accordance with this chapter.

(2) Any registration concerning which the department shall receive an application for cancellation thereof from the registrant or the assignee of record.

(3) Any registration concerning which a court of competent jurisdiction shall find:

(i) That the registered mark has been abandoned.

(ii) That the registrant is not the owner of the mark.

(iii) That the registration was granted improperly.

(iv) That the registration was obtained fraudulently.

(iv.1) That the mark is or has become the generic name for the goods or services or a portion thereof for while it has been registered.

(v) That the registered mark is so similar, as to be likely to cause confusion or mistake or to deceive, 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 under this chapter or former provisions of law and not abandoned, except that if the registrant proves that the registrant is the owner of a concurrent registration of the mark in the United States Patent and Trademark Office, covering an area including this Commonwealth, the registration under this chapter shall not be cancelled.

(4) When a court of competent jurisdiction shall order cancellation of a registration on any ground.

(5) Any registration in the following circumstances:

(i) Where an applicant, by verified statement or other good and sufficient evidence, shall prove to the satisfaction of the department that the applicant is entitled by virtue of prior use to any mark theretofore registered in the department.

(ii) In the case of a corporation having filed articles of dissolution or a decree of dissolution, any person may, at any time at least three years thereafter, present a petition to the department setting forth such fact.

(iii) In the case of a person not having filed articles of dissolution or a decree of dissolution, but having discontinued or gone out of the business to which such registration is pertinent.

(iv) When a registered mark has been abandoned or discontinued for a period of at least five years subsequent to registration and such abandonment and nonuse still persists.

In all circumstances enumerated in this paragraph, any person may present a petition for cancellation to the department. The petition shall set forth the pertinent facts relative thereto, and shall contain proof of service of notice of the petition on the person in whose name the registration is recorded, and asking that such registration be cancelled. The department shall fix a time to hear the parties concerned in the matter, and shall send, by certified mail, a notice of hearing to the person in whose name such registration is recorded. If, after hearing, the department is satisfied of the truth of the facts alleged in the petition in accordance with the provisions of this paragraph, it shall cancel the registration.

(b) Cross reference.--See 15 Pa.C.S. § 134 (relating to docketing statement).

(Dec. 21, 1988, P.L.1444, No.177, eff. Oct. 1, 1989; June 18, 1998, P.L.518, No.73, eff. 60 days)

Notation

Special Provisions in Appendix.  See section 7 of Act 295 of 1982 in the appendix to this title for special provisions relating to registration of trademark or service mark.

Cross References.  Section 1116 is referred to in section 1111 of this title.