Trademark registrations provide the owner with several rights and benefits. However, they are not “invincible.” Instead, a trademark registration can be challenged through a process called 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 registrations can be cancelled even after five years.
Why File a Trademark Cancellation?
Why would someone want to cancel an existing registration? Typically, it is because they believe the registration gives the owner rights which conflict with their own 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. That would allow your application to then move forward.
There are several arguments 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) mark. You can also file a trademark cancellation against a registration for a trademark you believe is no longer in use. In addition, you can file a cancellation to argue that a mark is merely descriptive and was not entitled to registration in the first place. These are some of the legal bases for filing a trademark cancellation, though there are many others, as well.
The Cancellation Proceeding
Like the opposition proceeding, the cancellation is like a mini-lawsuit. However, instead of injunctions or monetary damages, 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.
Once a petition for cancellation has been filed, the TTAB will institute the proceeding. They will contact the parties and give them a schedule that the cancellation will follow. These can 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. And if no response is given after the notice of default, the Board will enter a default judgment. This means that the party that filed the cancellation essentially “wins.” At that point, the registration would be canceled without further proceedings. If the cancellation moves forward and the parties do not settle, eventually the TTAB will make a ruling.
Representation
Like with a lawsuit, it is not advisable for someone without trademark litigation experience, or even basic legal experience, to try and represent themselves in a trademark cancellation. In fact, foreign-domiciled parties must be represented by a U.S. attorney in such a proceeding. Moreover, if a trademark cancellation is filed against you then you need to quickly file a strong response. Failure to do so could result in a default judgment where you lose your registration. A trademark attorney can give you guidance and help you navigate through the proceeding. They can also advise you whether settlement is a better option, and help with that process.
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 think 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.
