Trademark Cancellation

The discovery conference is the first thing the parties must do in a trademark cancellation after the answer is filed.  The Trademark Trial and Appeal Board (TTAB) requires that the parties talk about particular matters concerning the cancellation before the discovery period opens.  The parties are permitted to conduct the discovery conference in-person, but it’s typically done over the telephone for the sake of convenience.  Although the TTAB doesn’t usually participate in the conference, either party may ask that a TTAB interlocutory attorney assist in scheduling and guiding the conference.  This could be especially helpful if at least one of the parties has not retained an attorney.

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The entire cost of a trademark cancellation can sometimes be minimal and affordable.  Other times, it can be ridiculously expensive and prohibitive.  Now, you’re probably wondering how that could possibly be the case.  Well, the reason is because there are countless factors that greatly impact the cost of pursuing or defending a trademark cancellation.  For example:

• Whether you’re the petitioner or the registrant
• Whether you choose to retain an attorney
• Whether the cancellation raises complex or novel issues of law or fact
• The number of grounds for cancellation pleaded by the petitioner
• The amount of effort and time you’re prepared to invest in the cancellation proceeding
• Whether the parties can privately resolve the trademark cancellation and how long it takes to reach a settlement

Although you’re certainly in control of some of these factors, many of them you have little or no control over.  And when you don’t have control over the proceeding, the ability to calculate the total cost of a trademark cancellation can quickly become an exercise in futility.

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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.

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A trademark cancellation is a legal challenge to the continued registration of a particular trademark.  A trademark cancellation is started off by electronically filing a petition for cancellation with the Trademark Trial and Appeal Board (TTAB) through the ESTTA system and paying the required fee.  In most cases, a petition for cancellation of a trademark registration on the Principal Register must be filed within five years of the date that the registration issued.  However, there are some limited circumstances under which a registration on the Principal Register may be canceled at any time.  Conversely, a trademark registration on the Supplemental Register can be canceled at any time.

There are a few thousand trademark cancellations filed every year, which is really only a tiny fraction of the number of trademark registrations that are granted every year by the United States Patent and Trademark Office (USPTO).

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