- Posted on: Apr 2 2018
A trademark cancellation is a legal process by which a federally registered trademark can be cancelled and removed from the Principal Register of active trademarks.
Why do registered trademarks get cancelled?
Registered trademarks are subject to cancellation when they are:
- Already owned or likely to confuse the public: If someone already has the same or a very similar trademark, a registration could be cancelled on the basis that the mark is owned by someone else or that the mark is likely to cause confusion
- Unused or abandoned: Trademark rights are generated by use, and marks cannot be held without using them in commerce. Non-use is grounds for cancellation of a trademark registration.
- Not entitled to registration: If a registered trademark does not operate as an identification of source, is immoral or scandalous, or falsely identifies the source of the goods or services provided, it may be subject to a cancellation petition.
- Obtained through fraud: If the registration was fraudulently obtained, it could be vulnerable to cancellation.
How does one petition for cancellation of a trademark?
To ask that a trademark be cancelled, a petition for cancellation must be filed with the Trademark Trial and Appeals Board (TTAB). The petitioner must state the basis for the petition and the manner in which the trademark’s continued registration will create harm. Trademarks gain strength through use, and some causes for cancellation are not accessible after a mark has been registered for over five years. Additionally, a cancellation proceeding involves filing deadlines, discovery, the use of experts, and written submissions that are provided to the Board. It is, therefore, important to seek the advice of experienced counsel in considering a cancellation petition.
How do you defend against trademark cancellation?
The TTAB will notify you if someone files a petition to have your trademark canceled. The Board also issues a proceeding schedule that provides 40 days to respond to the petition for cancellation. If you do not respond within this 40-day timeframe, the matter is decided against you by default, a ruling will be made in favor of the petitioner, and your trademark will be cancelled. In addition to timely responding within the 40-day reply window, hiring experienced legal counsel is key to defending your trademark rights in the most robust manner possible.
Your attorney will first discuss with you the details of your use of the mark and any possible past interactions with the petitioner. Your attorney will likely then investigate the grounds the petitioner has given for asking that your trademark be cancelled and discuss with you whether those grounds have merit. Your attorney will likely also research the petitioner’s background and their use of their mark and will discuss with you possible defenses to the cancellation proceeding, allegations that you can bring against the petitioner’s use of their trademark, and alternative options for resolving the matter.
The procedure for filing or defending against trademark cancellations largely depends on the grounds for the cancellation proceeding. Hiring an attorney experienced in trademark law is a crucial first step in protecting your trademark rights. As one of the top intellectual property law firms in the country, our team at Dunlap Bennett & Ludwig has decades of experience in counselling clients on trademark issues.