Federal trademark registration with the U.S. Patent & Trademark Office provides the owner with several important rights and benefits. However, once a registration is issued there are some circumstances under which it can still be challenged. This process of challenging a trademark registration is called a trademark cancellation. When someone wants to “cancel” a trademark registration, they must file a petition for cancellation with the Trademark Trial & Appeal Board (TTAB). In most cases, a cancellation must be filed before the registration is five years old. However, there are some cases where a registration can be cancelled even after five years.
Why File a Trademark Cancellation?
Why would someone want to cancel a trademark registration? Typically, it is because they believe they are damaged by the registration. In other words, they believe the registration gives the owner rights which conflict with their own trademark rights. For example, let’s say that you file a trademark application and it is rejected based on a likelihood of confusion with another registered mark. If you believe you have a basis for canceling that registration, you might file a trademark cancellation in order to do so. This would allow your application to then move forward.
There are several reasons or legal “bases” that are commonly used to try and cancel a trademark registration. One might argue that they started using a trademark before the owner of a registration for the same (or a similar) trademark. You can also file to cancel a registration for a trademark you believe has been “abandoned.” In other words, the trademark is no longer being used by the owner of the registration. You can also file a cancellation to argue that a mark is merely descriptive and therefore should not have been allowed to register in the first place. These are just a few of the legal bases for filing a trademark cancellation, though there are many others, as well.
The Cancellation Proceeding
Like the trademark opposition proceeding, the cancellation proceeding is a kind of mini-lawsuit. However, instead of monetary damages or injunctions, the only thing at stake is the trademark registration itself. The only outcomes are that the registration will either remain active or it will be cancelled by the Board. This is significant because even if the registration is cancelled, that does not mean the owner of the registration has to stop using the trademark. It just means they no longer get the benefits and protections that come with federal registration.
Once a petition for cancellation has been filed, the Board will contact the parties and provide the schedule that the cancellation will follow. This schedule can typically be changed by mutual agreement of the parties, once approved by the TTAB. If the registration owner does not respond to the petition, a notice of default is issued. Then, if no response is provided after the notice of default, the Board will enter a default judgment against the registrant. That means that the USPTO will cancel the registration and the petitioner “wins” the proceeding. On the other hand, if the cancellation moves forward and the parties do not settle, the TTAB will eventually decide the case and make a ruling.
Representation
It is generally not advisable for someone without trademark litigation experience, or even basic legal experience, to try and represent themselves in a trademark cancellation. In fact, parties located outside of the United States must be represented by a U.S. attorney in such a proceeding. In addition, if a trademark cancellation is filed against you then you have a short window to file a response. Failure to meet the filing deadline could result in a default judgment where you lose your registration. A trademark attorney can give you guidance and help you with the proceeding. They can also advise you whether settlement is a better option, and help to negotiate a reasonable settlement.
Has a Petition for Cancellation Been Filed Against Your Registration? Do You Need To File a Trademark Cancellation?
If someone has filed a trademark cancellation against your registration, or if you need to file a cancellation, please consider speaking with a trademark attorney. This can be a difficult and lengthy process, and not something where you want to “do-it-yourself.” If you are interested in speaking with a trademark attorney that can assist you with a trademark cancellation, 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.
