Trademark Cancellation Proceedings | An Overview

Let’s talk about trademark cancellation proceedings! What is this, precisely? Most of the time, a trademark cancellation proceeding is filed after a mark has already been registered. But, it can happen at any time. It’s a legal case that’s processed through the Trademark Trial and Appeal Board (TTAB). It allows someone to cancel the trademark rights currently held by another. The proceeding functions to permit a new applicant to register a mark that is already owned and registered. 

The United States Patent and Trademark Office (USPTO) exists to protect the rights of trademark owners! The USPTO also has the power to declare that a given trademark owner doesn’t actually have a right to a particular mark. That’s where cancellation proceedings enter the picture. In the event that a new applicant holds that an already-registered trademark is somehow affecting their ability to register a mark, they can file for a cancellation. That Petition for Cancellation is filed with the TTAB. Unlike trademark opposition, cancellation takes place after a mark has been officially registered with the USPTO. 

The Trademark Trial and Appeal Board (TTAB) | Power Granted by the Lanham Act

The trademark cancellation process is governed by the Lanham Act or Trademark Act of 1946, which covers trademark law in the United States. Under this act, owners have rights, but not exclusively. The US trademark law also permits an individual to pose a challenge against an existing registered trademark via a cancellation proceeding! The reason? To ensure that competition and the market is as fair as possible. 

What are the main aspects of trademark cancellation? To start, the proceeding for a cancellation happens following the registration of a trademark. Anyone can petition for a cancellation. Be it the public or a competitor. And, in doing so, they can seek to establish that a mark should be canceled or invalidated. What are the grounds for a trademark cancellation? Generally, any sort of fraud in the application, non-use of the mark, if the mark is generic, or if the owner abandons the mark. The aim of a trademark cancellation proceeding is to invalidate the registration and have the mark removed from the official USPTO registry. 

As a governmental body, the TTAB maintains the power to govern cancellations. During the process, the TTAB is intent on figuring out if the owner of a mark should no longer have rights. They don’t handle monetary damages or anything else! 

Trademark Cancellation Proceedings are Digital | ESTTA

Since the proceedings happen in a court, many folks ask if the hearings are in person. They’re not! The trademark cancellation proceeding is all digital. Files are uploaded onto the TTAB’s Electronic System for Trademark Trials and Appeals (ESTTA) site. Any of the concerned parties can request to have a phone conference with the TTAB lawyer on a case and sometimes the TTAB grants oral hearings. And the time frame? The trademark cancellation process usually spans 30 to 36 months from beginning to end. 

Can anyone file a petition for a trademark cancellation whenever they want? Not really! There are some rules that you’ll need to abide by. If a petition for cancellation is filed within five years of when the trademark was registered, the applicant who files will have a range for their claims against the mark’s owner. The grounds for cancellation cover various concerns with the registration, which may have been overlooked by the initial examining attorney. This includes likelihood of confusion, fraud, abandonment, if the mark is generic (not distinct) or descriptive, and non-use. When more than five years has passed since registration, the party seeking cancellation has similar options, but it could potentially prove more difficult. 

The petitioner, or the one who files for cancellation, is required by the TTAB to have a legitimate foundation for the belief that they’ve been damaged by the registration of the mark. This “standing” must be established with the TTAB for a proceeding to happen. 

Steps for Filing a Trademark Cancellation Proceeding

Here are the basic steps one will take to engage in a trademark cancellation proceeding: 

• You should speak to a trademark lawyer! Trademark law is complicated. An attorney may offer the type of counsel that will help you carry out the process in the correct, most effective way. 
• Select the grounds for the cancellation of the existing trademark. It depends in each and every case! 
• Familiarize yourself with the trademark registration you’re challenging. Know all the details. That means, the goods or services the mark is associated with, the registration number, and the name of the owner. 
• Complete the petition for the trademark cancellation proceeding. This document will note the grounds, state any evidence you’ll submit, and describe the reasons you wish to cancel the trademark. 
• File your petition with the TTAB. It will cost $600 per class you are seeking to cancel. 
• Read the trademark owner’s response to the notice of the proceeding. They will be provided a chance to offer a defense of their trademark. 
• Go forth with the trademark cancellation proceeding, which entails evidence submission, a back and forth of arguments, and rarely, oral hearings. 
• Accept the decision made by the TTAB. 
• If either party disagrees with the TTAB’s decision, they may file an appeal. 

Are you intent on filing a petition for a trademark cancellation proceeding? Has a cancellation proceeding been filed against your trademark? Stockman & Poropat, PLLC is the trademark attorney for you! Contact our team today for a free consultation. We can walk you through the complex world of trademark law and develop a strategy that will vastly improve your chances for success! 

Up next we will be discussing Trademarks vs Service Marks.