After a trademark is registered, it is not ironclad, forever-lasting, or “bulletproof.” The owner will need to renew their registration from time to time to keep it active. Also, someone else can challenge the registration in a process called trademark cancellation. There are several legal bases or reasons for trademark cancellation to occur. In a previous post, I looked at abandonment as one reason a registration might be cancelled. This post will give an overview of that and several other reasons for trademark cancellation.
Abandonment
One of the most common reasons that someone may try to cancel a registration is if they believe the trademark that it covers has been abandoned. That just means that the owner is no longer using the trademark and has given up any rights they may have had. However, proving abandonment is not always so simple. If someone stops using a trademark with an intent not to resume use, then they have abandoned it. But how do you prove that they intended to not resume their use? In most circumstances, it’s unlikely that you can.
While proving someone’s intent is difficult, there is another easier way to show abandonment. If someone does not use a trademark for three consecutive years, the legal presumption is that they have abandoned it. At that point the burden is back on the owner to show they didn’t abandon the trademark.
If your trademark application is rejected based on an existing registration, you should see if that trademark is being used. Abandonment is one of the main reasons for trademark cancellation because it can clear the way for your application. If the registrant abandoned their trademark, they will probably not file an answer to your Petition for Cancellation. In that case, you may not have to spend much time or money to get the registration cancelled.
Priority and Likelihood of Confusion
When the Trademark Office reviews applications, it conducts its own trademark search for conflicts. However, there are times when a third party believes a registration conflicts with their rights. They may have a registration for a mark that they believe is too similar. Or they may not have a registration, but instead have common law trademark rights. Priority and likelihood of confusion is a reason for trademark cancellation where someone else believes they have superior rights.
Why is it called “priority and likelihood of confusion”? That’s because you need both to cancel a registration. “Priority” simply means that the petitioner (like the “plaintiff” in a cancellation) was first. They are basically saying they have “dibs” on a name. Their claim of priority may be based on the date they filed a federal trademark application. It could also be that they were using their trademark first. But they also have to claim a likelihood of confusion with the registered mark. That just means that their trademark and the registered mark are too similar to one another.
A notable aspect of priority and likelihood of confusion is that after 5 years of registration, you can no longer cancel a registration on this basis.
Genericness
Although some reasons for trademark cancellation become unavailable after a mark is registered for 5 years, you can always cancel for genericness. A trademark becomes generic when it is commonly used as the product or service for which it is used. You probably use some brand names as generic terms without even realizing it. For example, when you get a cut you might ask someone to bring you a “band-aid.” However, BAND-AID is actually a brand name used for adhesive bandages. If you want to know which actor was in that movie you might tell someone that you’re going to “Google it.” Obviously what you meant is that you were going to look it up using a search engine (whether that engine was Google or not).
When a name becomes generic, it ceases to become a brand or trademark. It can no longer identify a particular brand of product or service, and instead becomes synonymous with the product/service itself. This is usually as a result of something becoming so popular and successful that it becomes ubiquitous. You would think that is strictly a good thing, but from a trademark perspective it is literally the death of a trademark.
Descriptiveness
Like genericness, this is another reason for trademark cancellation that has to do with trademark distinctiveness. Unlike genericness, however, you can only cancel a registration for being merely descriptive within 5 years of registration. While the Trademark Office screens applications for descriptive marks, sometimes they can fall through the cracks. It is important for third parties to be able to challenge these registrations because descriptive terms are important for marketing. If one person is allowed exclusive rights to use descriptive terms, it can have a negative effect on competition.
Fraud on the USPTO
Finally, trademark registrations can be cancelled for fraud. This occurs when an applicant or registrant makes a misrepresentation of a material fact in order to deceive the U.S. Patent & Trademark Office. While fraud is very common at the USPTO, successful cancellations based on claims of fraud are not. The standard to prove fraud is extremely high. So high that only one such case met that standard in a 5ish year period from 2009 to 2014.
The standard for fraud has changed over the years due to various appellate decisions. While it is currently a very stringent standard, a new interpretation of the correct standard could change things in the future. As a result, no one should assume that they can get away with making false statements, or even negligent ones, in USPTO filings. What constitutes fraud could change again, and make your registration subject to cancellation.
Need to File a Petition Based on One or More of the Above Reasons for Trademark Cancellation?
If you are considering filing a trademark cancellation be aware: it is like a mini-lawsuit with a process, procedure, and deadlines. It is very unlikely that someone representing themselves can successfully petition for or defend against cancellation. If you would like me to take a look at your situation, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
