Cancelling a U.S. Trademark Registration
Updated: Mar 31
(Disclaimer- The following is not to be construed as legal advice. If you have any trademark questions, please call us or another licensed attorney).
What is a Petition to Cancel?
A petition to cancel is a very powerful tool trademark owners can use to protect their brand from other trademarks. Over 300,000+ trademark applications have already been filed in 2020 with the United States Patent and Trademark Office. (USPTO Data Visualization Center FY 2020). Any one of these marks could put your trademark rights at risk, which is why it is important to be aware of the cancellation process.
A trademark owner can file a petition to cancel as a way of legally challenging an already existing and registered trademark that they believe may be damaging their brand. Similar to a civil lawsuit, cancellation proceedings are heard before the Trademark Trial and Appeal Board where pleadings and motions are filed, and discovery can be exchanged. Although the TTAB is not as formal as federal court, a petition to cancel should not be taken lightly and parties should be fully aware of the legal battle they are getting into.
Can anyone file a Petition to Cancel?
A trademark owner can file a petition to cancel if they believe their mark is being harmed by some other existing trademark. If a trademark owner believes that their trademark will be damaged because of another existing trademark, then they have “standing.” Standing is what gives you the right to file a petition to cancel because you have a direct and personal stake in the outcome of the proceeding. So long as you aren’t firing off petitions to cancel just to harass others, standing is an easy thing to establish and there is no specific amount of harm you need to prove. However, just because you have standing does not mean you will win the cancellation. The TTAB will determine whether a mark will get canceled based off the grounds for cancellation that the party is alleging.
What are the grounds for a Petition to Cancel?
A party must have some legal grounds on which they are seeking to cancel another party’s trademark. A comprehensive list of grounds is listed under Section 2 of the Trademark Act. The most common grounds are either likelihood of confusion, abandonment, priority of use, or merely descriptive. Each ground alleged is an independent legal theory, and it is highly important for a party to correctly identify and apply the proper grounds. For example, a party alleging likelihood of confusion, should also check to see if they have priority of use of the mark and include that as a basis for cancellation. Trademark rights are afforded great protection, and an examining attorney will closely review all arguments before deciding to cancel a mark.
When are the procedures for filing a Petition to Cancel?
Even after identifying the proper legal grounds, it is important for a trademark owner to follow all the procedural rules and deadlines associated with filing a petition to cancel. These rules can be found in the Trademark Trial and Appeal Board Manual of Procedure. The deadlines and procedures are specific and sometimes depend on the grounds for which you are filing the petition. Therefore, it is crucial that these rules be strictly followed.
Filing a petition to cancel allows you to enforce your trademark rights against other marks that are harming your brand. Similarly, if you are the one being served with a petition to cancel, having a strong defense is essential to ensuring your rights are protected until the TTAB makes a final decision. Whatever side you are on, it is important to consult with an experienced attorney who understands all the legal and strategic sides of these proceedings.
The trademark law attorneys at Perleberg McClaren LLP have decades of experience representing trademark clients in a wide variety of industries.