This page is about Trademark Cancellation which occurs when a Petition to Cancel is filed with the Trademark Trial and Appeal Board (TTAB). For a TTAB case in which the trademark has not yet registered, please see our Trademark Opposition page. If a Notice of Opposition or Petition to Cancel has been filed against you, you may also visit our TTAB Answer page.
A Trademark Cancellation is filed with the Trademark Trial and Appeal Board after a trademark registers with the U.S. Patent and Trademark Office. There are a variety of acceptable reasons for trademark cancellation. If you want to request cancellation or are facing a cancellation request, the below covers some of the nuances of the process.
Trademark Cancellation Proceeding
Trademark cancellation proceedings are the process of having a registered trademark invalidated. If successful, a petition for cancellation will result in the trademark being removed from the federal register. There are instances in which this can take place through the federal courts. However, more frequently the matter is filed in the TTAB due to a more streamlined process.
It’s worth noting that trademark cancellation and opposition are two separate and distinct processes. Trademark opposition takes place during the 30-day opposition period after an approved trademark application is published in the Official Gazette. This process is meant to prevent a trademark from ever being registered.
In most cases, trademark cancellations are filed because a trademark owner believes another registered trademark is infringing upon its rights. This is one method of avoiding federal trademark litigation in the courts.
Trademark cancellation is an increasingly common occurrence. In fact, there has been an increase in filings every year since at least 2015. There were 2,253 petitions filed in 2018. While oppositions are far more common (6,496 in 2018), both are effective methods for protecting your trademark rights.
Grounds for Trademark Cancellation
The first hurdle to clear in having a trademark cancelled is standing. A petitioner must show that they have standing to request the cancellation. In other words, the petition must show that they will be directly harmed by the registration in some way.
This initial hurdle is meant to keep out mere inter meddlers. Once standing has been established, there must be legal grounds to have the trademark cancelled. If the cancellation is filed within five years of registration, the trademark can be cancelled for the same reasons a notice of opposition could have been filed.
The following are among the most common grounds for trademark cancellation within the statutory five-year window:
- The trademark has been abandoned.
- A likelihood of confusion exists.
- The trademark wasn’t in use as alleged in the application.
- There was no bonafide intent to use the trademark in commerce.
- Fraud occurred during trademark registration process.
- Dilution of a famous trademark exists.
- Trademark is either deceptive, scandalous or immoral.
- The trademark has become genericized (e.g. “dry ice” and “escalator”).
- The trademark is a surname or merely descriptive.
These are all grounds for trademark cancellation within the first five years. After this time frame has passed, though, a petitioner may have more limited grounds to request cancellation. Specifically, after a certain time has passed it becomes more difficult to cancel a trademark based on a claim of likelihood of confusion.
Some of these grounds may leave you wondering how a trademark ever got approved. Keep in mind that over 300,000 trademark applications are filed yearly in America. With these numbers, even the trademark attorneys at the USPTO can make mistakes. Fortunately, trademark cancellation is a way to rectify an error.
Trademark Cancellation Procedure
If a trademark cancellation is fully contested, the process can go on for a year. Fortunately, very few are contested. By far the most common result with a trademark cancellation is that one side or the other gives up very early in the process. This is part of the reason that we aggressively pursue these types of actions. Here are the most important aspects of the trademark cancellation process that you may encounter.
How to Cancel a Trademark
Filing of the Petition to Cancel
The initial step of trademark cancellation is the filing of the petition. The Petition is filed with the Electronic System for Trademark Trials and Appeals (ESTTA). The USPTO will then assign a processing number and schedule proceedings related to the petition.
After an initial telephone call between the attorneys in the case, the discovery phase begins. The discovery phase of trademark cancellation proceedings is very similar to that in federal courts. This process will allow both sides to collect relevant evidence and build their case. This can include issuing document requests, interrogatories, requests for admission, depositions and other evidence gathering such as subpoenas.
Presentation of Evidence and Trial Briefs
Although the process of a trademark cancellation is very similar to federal court proceedings, you typically won’t “get your day in court.” All relevant material is submitted directly to the TTAB and an in-person hearing is rare. After all evidence is presented and trial briefs are submitted, a decision issues usually in about 6 months.
Trademark Cancellation Outcomes
Unlike cases of trademark infringement in federal court, there’s no chance of receiving a damage award or attorneys fees as a result of a cancellation proceeding. The TTAB simply decides whether to cancel a trademark or not. They may also decide who is the rightful owner of the trademark if it’s in dispute.
Sticking to the Timeline
The USPTO has strict guidelines when it comes to trademark cancellation proceedings. You need to ensure you meet each of these deadlines in order to protect your rights. Failing to respond to a petition, for instance, will result in a default judgment and loss of your registered trademark. Similarly there are deadlines to complete discovery, file motions, and file a trial brief.
Responding to a Trademark Cancellation
If another party files a trademark cancellation against your trademark, you’ll receive a notice of the proceeding via email. This notice will include the petitioner name, the basis of the rights including the registered trademark at issue if one exists, and the deadline for every aspect of the case. You’ll need to pay close attention to the answer deadline since a failure to respond by this date will result in abandonment of the trademark.
There are several defenses you can utilize to defend your trademark. The particular defense will depend heavily on the grounds that are claimed in the petition. This could include anything from proving that no likelihood of confusion exists to providing evidence that there was clear intent to use the trademark. You’ll need to build your defense based on the claims made by the plaintiff.
Avoiding Trademark Cancellation
There are a few ways to minimize the likelihood of having a trademark cancelled.
Pick the Right Trademark from the Start
Some of the most common reasons a trademark is cancelled relate to the initial selection of the trademark. If the trademark is likely to confuse consumers, already in use, merely descriptive or a surname, you may face problems down the road even if the trademark registers.
This is why a trademark search by a trademark lawyer is highly recommended prior to ever using a trademark.
File Trademark Renewals and Declarations of Use
Even though trademark rights can go on indefinitely, there are still maintenance documents that must be filed. Between the fifth and sixth anniversaries of your trademark, and every ten years after registration, you must file renewals. A failure to do so will result in cancellation.
Maintain Control Over Trademark
A trademark owner must control the trademark and if it does not trademark rights can be lost. Therefore, if subsidiaries or sister companies will use a trademark there should be a written license agreement in place.
Be Specific with Use
When registering for a trademark or filing a declaration of use, it’s imperative to be specific when listing the products or services the trademark is being used for. Saying that it’s being used on all of a company’s products when it’s only being used on specific items, for instance, may be grounds for cancellation.
Keep Trademark in Use
If it’s proven that you haven’t used or defended your trademark for a significant period of time, someone may cancel your trademark alleging abandonment. Three years of non-use is considered presumptive abandonment.
Fight Against Genericization
Many companies have been stripped of their exclusive trademark rights because they allowed their trademark to become genericized. Once the public views a trademark as a descriptor rather than branding or the designation of the source of goods, it could fall into the public domain and be used by anyone.
Mandour & Associates – Trademark Cancellation Attorneys
If you are involved in a trademark cancellation, or need to file one, we can assist. We are highly experienced and aggressive trademark cancellation lawyers having handled over 250 trademark cancellations and notices of opposition. To see the over 250 TTAB cases that we have handled, you may click here.
For a free consultation regarding a trademark cancellation, please contact us today.