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).
What Must a Petition for Cancellation Include?
The petitioner (the party filing the trademark cancellation) must properly allege the following two elements in the petition for cancellation to survive a motion to dismiss that the registrant (the owner of the registration that’s being canceled) may file to attempt to get the cancellation dismissed: (1) entitlement to a statutory cause of action, and (2) the legal grounds for cancellation.
Entitlement to a Statutory Cause of Action
The petitioner must plead an entitlement to bring a statutory cause of action (i.e. to file the petition for cancellation). Basically, this means alleging facts sufficient to demonstrate that the petitioner is being harmed or damaged by the existence of the registrant’s trademark registration. Said another way, the petitioner must show that it has a direct and personal stake in the outcome of the trademark cancellation and isn’t just trying to cause mischief. I recommend that you read Section 309.03(b) of the Trademark Trial and Appeal Board Manual of Procedure (TBMP) to learn more about this essential requirement.
Legal Grounds for Opposition
A petition for cancellation must also allege at least one ground for challenging a trademark registration. Most often, a trademark registration is challenged on the basis that the trademark itself is no longer in use and has been abandoned. But, a trademark registration can also be challenged on a number of other grounds. For example, trademark cancellations can be based on the petitioner’s ownership of prior rights in a confusingly similar trademark, or the petitioner’s belief that the registrant’s trademark is merely descriptive, generic, deceptive, has never been used in commerce, or is otherwise not entitled to registration on either the Principal Register or Supplemental Register. Although TBMP 309.03(c)(1) provides a non-exhaustive list of possible grounds for cancellation, the vast majority of them are unavailable if the registration is on the Principal Register and is over five years old.
What Happens After the Petition for Cancellation is Filed?
Shortly after the petitioner files the petition for cancellation, the TTAB will institute the trademark cancellation by emailing the Notice of Institution to both parties. The Notice of Institution identifies the cancellation number, provides some basic information about the trademark cancellation process, and includes the schedule the trademark cancellation will follow. This schedule informs the parties of many important deadlines and dates by which certain actions must be taken. If necessary, the schedule can be pretty easily changed through mutual agreement by the parties and approval by the TTAB. In fact, this often occurs during the course of the proceeding, especially if the parties are trying their best to settle or resolve the cancellation amicably.
What Does the Registrant Have to Do?
Once the trademark cancellation is officially instituted, the registrant will have 40 days in which to either (1) answer the petition for cancellation, or (2) file a motion to dismiss if there’s a legal basis for doing so. If the registrant files an answer, then the cancellation will simply proceed as laid out in the schedule (with the next step being the discovery conference). If instead the registrant files a motion to dismiss, then the cancellation is suspended (put on hold) until the TTAB decides the motion. If the registrant does neither, then the TTAB will issue a Notice of Default. If the registrant fails to respond to the Notice of Default within 30 days, then a default judgment is entered against the registrant, the cancellation is sustained in favor of the petitioner, and the registrant’s registration is canceled.
In the event the registrant files an answer and is eventually successful in defending the cancellation (which could take 2-3 years or more), the registration will continue to remain in full force and effect. On the other hand, if the TTAB rules in favor of the petitioner, the worst that can happen is a canceled trademark registration. Under no circumstances can the TTAB award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.
A Trademark Cancellation is Serious Business
If you’ve received notice that a trademark cancellation has been filed against your registration, or if you’re considering filing a trademark cancellation of your own, the first thing you should do is seek the help of an experienced and dedicated trademark attorney. In fact, if you’re a “foreign-domiciled” individual or entity, you’re required to hire a U.S.-licensed attorney to represent you in a trademark cancellation (regardless of whether you’re the petitioner or the registrant). Because a trademark cancellation is a serious and complex legal proceeding that requires specialized knowledge and skills to properly navigate, you’ll want a trademark lawyer to provide you with valuable advice and guidance throughout the entire proceeding. Your trademark attorney will not only be able to assist you in pursuing or defending a trademark cancellation, but can also enter into settlement negotiations in the hope of reaching an amicable resolution that’s satisfactory to both parties.
Ask Me About a Trademark Cancellation
I’m experienced US trademark attorney Morris Turek. If you would like to talk to a skilled and trusted trademark attorney about the cost of a trademark cancellation, pursing a trademark cancellation against someone else’s registration, or defending a cancellation that has been filed against your trademark registration, please feel free to give me a call at (314) 749-4059 for a complementary legal consultation. You can also request your consultation through email (firstname.lastname@example.org) or by filling out my contact form (located below). I look forward to hearing from you soon.