If you’ve stumbled across this article, you probably find yourself needing to answer a petition for cancellation that’s been filed against your trademark registration. As you may know, a trademark cancellation is filed with the Trademark Trial and Appeal Board (TTAB) for the purpose of challenging the continued federal registration of your trademark. Unless you have legal grounds for filing a motion to dismiss the cancellation (which is pretty rare), the first thing you’ll need to do after the TTAB institutes the cancellation proceeding is to draft and submit an answer.
Do I Need to Answer a Petition for Cancellation?
If you choose not to answer a petition for cancellation, or you unintentionally miss the deadline for filing the answer, the TTAB will issue a Notice of Default. You’ll then have 30 days in which to explain to the TTAB why it shouldn’t enter judgment against you. If you don’t file a response to the Notice of Default, the TTAB will grant the petition for cancellation and your trademark registration will be canceled.
When Do I Need to Answer a Petition for Cancellation?
After the petition for cancellation is filed, the TTAB will formally institute the cancellation proceeding and will send out a schedule setting forth all of the dates by which certain actions need to be taken. The first item on that schedule is the deadline for filing the answer. In general, you must answer a petition for cancellation within 40 days of the TTAB instituting the cancellation proceeding. You must electronically file the answer through the ESTTA system and you need to serve a copy of the answer on the petitioner (usually by email).
What Must the Answer Include?
When you answer a petition for cancellation, it’s critical that you act in accordance with all legal and procedural rules and regulations. I strongly encourage you to study Section 300 of the Trademark Trail and Appeal Board Manual of Procedure (TBMP) to familiarize yourself with all applicable rules. That being said, an answer principally consists of numbered paragraphs that correspond with the numbered paragraphs in the petition for cancellation. In each paragraph, you should admit or deny the allegations contained in the corresponding paragraph of the petition for cancellation. The answer should more or less mirror the petition for cancellation.
The answer may also include what are called “affirmative defenses.” These are specific legal defenses you may have which, if proved at trial, would essentially nullify the petitioner’s petition for cancellation. Moreover, the answer may include a counterclaim for cancellation of any registrations owned by the petitioner that it’s relying on as a basis for canceling your trademark registration. Please be aware that filing a counterclaim for cancellation will require that you satisfy all pleading requirements outlined in Section 300 of the TBMP. A counterclaim will also involve payment of a filing fee.
What Shouldn’t I Include In the Answer?
Most people think that when you answer a petition for cancellation, it’s a good idea to incorporate arguments and evidence attacking or criticizing the petitioner’s claims. To the contrary, the answer isn’t a place for arguing or attempting to refute the petitioner’s case. The TTAB won’t consider anything of that nature so you might as well leave it out. The same goes for any documents or other materials you submit with the answer. The TTAB will only review and assess evidence that has been duly authenticated and filed during your 30-day trial period (which is initially scheduled for approximately a year after the deadline for filing the answer).
A Trademark Attorney Can Help Answer a Petition for Cancellation
I’m experienced US trademark attorney Morris Turek. If you need to answer a petition for cancellation but would rather not do it yourself, please contact me for immediate professional assistance. I may be reached at (314) 749-4059, through email at morris@yourtrademarkattorney.com, or by filling out the contact form located below. I look forward to speaking with you soon.