What Is Trademark Cancellation?

Trademark cancellation is the legal process of removing a registered trademark from the books. This allows the trademark to be registered by another party.

Trademark cancellation is a legal argument under the Lanham Act. Its purpose is to allow a party to petition for removal of a trademark from the federal register. This is done by filing a Petition to Cancel, which is usually argued before the TTAB, or Trademark Trial and Appeal Board. In some cases, the argument can be litigated in federal court, and the courts can also cancel a mark in such a circumstance.

To cancel a trademark, the petitioner must prove that the mark will cause harm if it is not canceled. Because the petitioner only has to prove that damages may occur and not that it has occurred, this is not as difficult as it may at first seem.

Generally, the TTAB concerns itself with trademark owners trying to stop legitimate competition through misuse of its mark. Thousands of cancellation requests are filed every year.

The Lanham Act

The Lanham Act is the primary document establishing trademark law in the U.S. It was first signed into law by President Truman in 1947 and has been amended several times. It outlines the remedies available for trademark infringement, the standards for establishing dilution and confusion under trademarks, civil actions that can be taken, and specific circumstances that constitute trademark infringement.

It establishes the Principal Register, which grants rights to the trademark owner. It also lays the grounds for challenging trademarks and the rules that allow them to be canceled. The Lanham Act also establishes the Supplemental Register, which lists marks that are not currently registrable but may be eligible in the future.

Trademark Cancellation vs. Opposition

Cancellation is different than trademark opposition. Trademark opposition is filed before a trademark is registered, while trademark cancellation seeks to remove a trademark that has already been registered.

When someone applies for a trademark, their application will be published in the USPTO official Gazette. Anyone seeking to challenge the trademark must do so with 30 days of publication. Petitions can raise legal issues with the application or cite damages they would receive if the mark becomes registered.

Why Is Trademark Cancellation Important?

Trademark cancellation is important because it protects the property of business owners. It also protects their ability to compete in the free market. An application for a mark can be refused if there is a similar mark already registered. If the applicant believes they have the right to the trademark, they may file a petition for cancellation to protect their possible right to the mark.

Reasons to Consider Using Trademark Cancellation

You should consider trademark cancellation if you believe that you will be damaged by the mark's existence. This could be because:

  • Your own marks or business will be weakened by the mark's existence
  • The existence of the mark interferes with your ability to fairly compete
  • The mark will hurt your business's reputation or operations

If you need to file for a trademark cancellation, you have two filing options. Most trademark cancellations are filed with the Trademark Trial and Appeal Board (TTAB). They will also hear your case. It is also possible for a federal court to cancel a trademark. This usually occurs during litigation of a separate court case.

Trademark Cancellation Grounds

The first step in canceling a trademark is to file a petition for cancellation. In your petition for cancellation, you will need to show you have standing to cancel the trademark. You will also need to pay the registration fee. It can be done either on paper or electronically.

Second, you must prove there are reasons for the trademark to be canceled. You can request a trademark cancellation five years after it was first registered. A cancellation may also be requested within five years of re-publication if you meet certain conditions.

Cancellation Within Five Years

If less than five years have passed since a trademark is registered, reasons to request a cancellation can include:

  1. The mark can be confused with your property or business
  2. You were using the trademark before the registered owner
  3. The mark is someone's last name, is descriptive on a basic level, or describes a location like a country or city
  4. It is deceptive in some way
  5. The mark was not being used before registration or you can prove that the owner never intended to use the mark
  6. The mark hasn't been used or defended in at least three years
  7. The registration was fraudulent
  8. The mark dilutes the usefulness or trade identity of another mark
  9. There were major errors made in the initial filing of the existing mark

Cancellation after Five Years

If the mark has been registered for more than five years, there are different requirements for cancellation:

  1. The mark has become so common that it is now a generic term
  2. It defines a functional use
  3. The mark has been legally abandoned by its owner
  4. It was registered in a fraudulent manner
  5. The trademark is immoral, deceptive or scandalous in some way
  6. The mark is disparaging or suggests a false connection with people, beliefs, national symbols or origin, or institutions
  7. The registrant either does not, or cannot, control the trademark
  8. The owner of a certification mark produces or markets goods and services to which the mark applies
  9. The owner allows the mark to be used incorrectly
  10. The registrant will not certify the goods and services of those who maintain the mark's conditions or standards
  11. The trademark has never been published under the provisions of a Federal Trademark Act

Finally, the Federal Trade Commission can apply to have a trademark revoked if it:

  • Becomes generic
  • The registrant produces or markets goods and services
  • The mark is used for other purposes as above
  • The registrant refuses to certify goods and services

Process of Litigation

The steps to cancel a trademark are outlined by the United States Patent and Trademark Office . When the petition is filed, the USPTO will assign a processing number. The USPTO will also schedule proceedings to resolve the dispute. If the schedule date is inconvenient, it can easily be changed with board approval if both parties agree.

Called an interference, the claim will be heard by the Trademark Trial and Appeal Board under 15 U.S. Code, Section 1067. If the original trademark owner does not respond to the request within 30 days, their trademark will be canceled automatically.

The next is a teleconference. This will usually be scheduled 30 days after the response deadline. During the teleconference, the attorneys discuss procedure and potential settlements.

After the teleconference, there will be a full discovery phase. Throughout discovery, each side collects evidence and clarifies what is at stake. They will also conduct questioning, gather documents, request admission of evidence, responds to the other party's discovery requests, and takes depositions.

Next, evidence and trial briefs will be presented. This is usually scheduled 10 months after the petition is filed. The trial generally will end 45 days later. However, it is possible for the pre-trial disclosures can be pushed back from 6 months to a year.

Outcomes of Trademark Cancellation

At the end of your hearings, there will be one of five outcomes:

  1. If you are challenging a pending registration, it may be refused
  2. The mark may be canceled outright or its use may be restricted in case cancellation is approved
  3. The mark's registration may be refused, or any number of several marks if the case for interference
  4. Registration of the mark may be transferred to its rightful owner
  5. Dual ownership of the mark may be granted. However, there will be restrictions and conditions to prevent dilution and brand confusion

Understand that no monetary damages or fee compensation will be granted during these hearings. The only thing that will be decided is ownership of the trademark in question.

Attorney Hours

Filing the response to the petition usually takes from two to four attorney hours. Teleconference requires up to two hours of attorney time. The discovery phase can take anywhere from 10 to 20. Presentation of evidence can take 40 hours or longer.

Your attorney may negotiate a settlement over many months. This may equal several days of billable time.

In total, a quickly settlement can take from 3 to 10 hours. For difficult cases, expect at least 85 billable hours and up to two years before a resolution is reached. This is in addition to costs and time that go with depositions.

Important Timeline Considerations

There are very specific deadlines that must be followed. It's vital to adhere to these rules and guidelines.

Under the Madrid Protocol, a challenge to a trademark registration must be filed online within 30 days of a mark's publication. The Patent and Trademark Office sometimes grants extends this period if a written request is made. Extensions take two forms:

  • A 30-day extension on written request, followed by a 60-day extension with good cause, and a second 60-day extension with stipulation or with written consent by the applicant.
  • A 90-day extension with good cause, followed by one 60-day extension if the applicant grants written consent or stipulation

As above, the petition for cancellation can be filed within five years of the mark's publication, if the mark is abandoned, becomes generic, is used or gained fraudulently. A petition may also be filed if the mark is a certification mark and the owner can't control it or starts to manufacture goods related to the certification.

If a trademark owner does not demonstrate that the mark is still in use five to six years after registration the USPTO will automatically cancel it without any challenges needed. Automatic cancellation happens to many marks because the USPTO doesn't send reminders or cancellation notices.

When a cancellation hearing is scheduled, the registrant must respond to the petition within 40 days. Without such a response, the board issues a summary judgment against the registrant.

Fighting a battle for trademark cancellation can take up to two years, and can cost many thousands in legal fees.

Pitfalls to Avoid

Remember that even though a trademark may have been officially canceled, common law rights can still be attached to the mark. This means the original owner can still claim rights to the mark based on the fact that they used it first. However, the original owner still loses the benefits of registration when an infringement suit is filed.

Trademark case law is very complex, comprising a number of federal Acts dating back to 1881. Almost every Petition to Cancel requires a legal argument. While the basic arguments are not difficult to make, the long case law history and expansive rules of procedure can make litigation tricky.

It's also important to note that when arguing that a trademark has become "generic," simply demonstrating the trademark's popularity as a general term is not enough to achieve cancellation. It must be established that the trademark is no longer effectively seen by the buying public as a brand, but solely as a descriptive term.

After you've registered a trademark, you will periodically need to prove it is still in use. Between the 5th and 6th year of usage, you must file a Section 8 Declaration. This is used to show your mark is still in use. The USPTO will not remind you to file your Section 8 Declaration, so be sure of the exact dates. If you fail to file your Declaration, your trademark will be canceled.

Find Legal Help for Trademark Cancellation

Trademark cancellation is often very contentious, which can be difficult to handle without the proper legal experience. If you want to make sure your trademark cancellation is granted and that you are able to take control of your rightful trademark, then you need representation from one of the attorneys you'll find by using UpCounsel.

UpCounsel is an attorney marketplace where you can find experienced attorneys who are ready to help you with your important cases. Whether it's canceling a trademark or any other important legal issue, you'll be able to find an attorney on UpCounsel that can handle your job. Post your legal need today and start searching for an affordable, knowledgeable legal professional.