Trademark cancellation involves removing a trademark registration from the United States Patent and Trademark Office (USPTO) register. This type of cancellation is usually in direct response to a trademark cancellation action. The Trademark Trial and Appeal Board (TTAB) handles most trademark cancellation proceedings, but they might also take place in a federal court or before the USPTO. War IP Law, PLLC handles trademark cancellation proceedings. These situations can be complex, and, for many clients, there is a lot at stake. Call 202-800-3754 for more information.
The Basics: What is Trademark Cancellation?
When a trademark is canceled, it is removed from the USPTO register and it is no longer a registered trademark. By eliminating the registration, another party can register the trademark. In most situations, a party requests trademark cancellation because they believe a trademark is a misuse of an already-registered trademark. This type of situation often involves a competitor attempting to stop legitimate competition by misusing a mark.
In a two-party trademark cancellation action, the challenging party will generally file a Petition to Cancel with the Trademark Trial and Appeal Board or in a federal court. To be successful in a cancellation request, the party filing the Petition to Cancel must prove that the trademark will cause harm if it is not canceled. The party does not have to show that damage has already occurred but that the registered trademark might cause harm in the future. If the party cannot show that they will suffer harm because of the trademark, then they likely do not have standing to bring a cancellation request.
Trademark Cancellation Vs. Trademark Opposition
Trademark cancellation differs from trademark opposition because it affects a trademark that a party has already registered. Trademark opposition applies to trademarks that have not yet been registered.
When someone requests a trademark, the United States Patent and Trademark Office (USPTO) publishes the request for 30 days in its “Official Gazette” before registration of a Notice of Allowance is issued. Anyone who wants to challenge the trademark registration must do so within that 30-day period. Those who oppose the registration of the applied-for mark file a petition explaining the damages they would suffer if the trademark were registered.
Grounds for Trademark Cancellation
In general, two overarching grounds for trademark cancellation exist.
- The registered mark is likely to be confused with a prior-registered mark.
- The mark does not meet the requirements for registration, such as not being distinctive enough from another mark.
In many jurisdictions, trademark registration might also be canceled for non-use. In those situations, a party has registered a trademark but not used it for a specific time.
Other potential grounds for trademark cancellation might include things like:
- Fraud during the trademark registration process
- The trademark was not actually in use, as the application alleged when it was registered
- The trademark is scandalous, deceptive, or immoral
- The trademark has become genericized (e.g., “dry ice,” “granola,” or “band-aid”) or is a generic description
For some grounds, a party must petition for trademark cancellation within five years of the date the trademark is registered. Other grounds provide a longer timeframe to request cancellation. If you are considering filing a petition to cancel a registered mark, talk to the experienced intellectual property legal team at War IP Law, PLLC, first to check on filing deadlines.
The Trademark Cancellation Process
Those who want to challenge a trademark have two options to file a cancellation request. Both options have benefits and drawbacks to consider before filing.
TTAB Cancellation: Inter Partes
The normal trademark cancellation process involves a two-party conflict: the challenger and the registered trademark owner. This process is referred to by the Latin phrase “inter partes,” which essentially means between parties.
In this type of action, the challenger asserts their position, and the registered owner responds to defend their registered trademark. In this way, the process is very similar to traditional litigation that you might see in federal or state court. The registered trademark will cancel automatically if the registered owner does not respond to the challenge. All in all, this process could take upwards of a year to get the case ready to present before the TTAB.
Single Party Challenge to Trademark Registration
Challengers can also request a single-party challenge to trademark registration. In this process, the trademark registration owner and USPTO go through the challenge proceeding. That is after the challenge is granted, the third party is no longer involved.
The Trademark Modernization Act (TMA), which became effective in December 2021, introduced this faster and more cost-effective method to challenge trademarks. It provides an ex parte expungement and reexamination process to cancel trademarks. These are the only two grounds for cancellation available as part of the single-party challenge process.
- Expungement: This challenge requests trademark cancellation for a trademark that has never been used. A party can only file this type of request for registrations between three and ten years old.
- Reexamination: A reexamination challenge asks the USPTO to look closely at whether a registered trademark owner used the trademark as required during certain stages of the trademark registration process. This challenge is only available for trademarks under five years old.
The USPTO does much of the work involved in these types of cancellation requests, making them much easier for the challenging party. As a result, if a challenging party believes they may be successful on grounds for non-use, this single-party challenge might be a more cost-effective and streamlined method to use.
Responding to a Trademark Cancellation Request
If your company is facing a trademark cancellation petition, you need to take action. If you do not respond within a specific amount of time (usually 30 days), then your trademark registration may be canceled automatically.
When responding to a cancellation petition, you might want to consider the following:
- Does this party actually have standing to assert the petition? Will they suffer harm if the registration is not canceled?
- Was the petition filed within the right time period to assert a challenge?
- Is there actually a likelihood of confusion?
- Has the registered trademark met all of the usage requirements?
The basis of the challenge will often dictate how you need to respond. For instance, if the claim is based on fraud, the approach you take to respond might be very different than if the complaint’s main claim dealt with generalization.
Learn More About Your Legal Rights Regarding a Trademark Cancellation
Whether you want to challenge a trademark registration or you need to defend a trademark cancellation request, you may want to consider involving a trademark attorney. War IP Law, PLLC has extensive experience with trademark cancellation matters. Call us at 202-902-6362 or use our online scheduling feature to arrange a consultation with a member of our team.