Trademark cancellations is the legal mechanism for third parties to remove registered trademarks from the principle or supplemental registers at the USPTO.
Trademark owners who believe a trademark registration that hurts them due to likelihood of confusion, trademark dilution, genericism or other harms can file a trademark cancellation proceeding, called a Petition for Cancellation, with the Trademark Trial and Appeal Board (TTAB). If successful, the TTAB will instruct the United States Patent and Trademark Office to remove the trademark registration from the Principal or Supplemental Register.
A Petition for Cancellation filed with the TTAB viewed in the TTABVUE system (discussed below)
Cancellations vs. Oppositions
Ideally, trademark owners would nip a trademark application in the bud before it becomes a trademark registration by filing an Opposition Proceeding. When an application is Published for Opposition, anyone can file an Opposition, or an extension to file an Opposition within thirty days. The main reason it is desirable to file an Opposition when a trademark is in the application phase rather than wait for it to become a registered trademark and file a Cancellation is because the burden of proving dilution or likelihood of confusion is lower in Opposition cases. In other words, it is easier to kill an trademark application in an Opposition case than it is to cancel a trademark registration.
Grounds for Cancellation
There are many different grounds for Cancellations, however, in order to have standing to file a Cancellation proceeding, the plaintiff must be able to show how the specific ground claimed for Cancellation harms them. The following list are some of the grounds to file a Petition for Cancellation:
Cancellations Proceedings Before and After Five Years
If a trademark owner misses the deadline to file an Opposition, it is still important to file a Cancellation sooner rather than later. The main reason is, once a trademark has been registered for five years, it becomes “incontestable” and the burden raises to show harm and cancel the trademark registration i.e. it is harder to cancel trademark registrations after five years. The TTAB also views the more time a trademark is registered without causing an issue as evidence that there is no problem with the trademark registration.
Rules and Procedures of Cancellations
As with all proceedings before the TTAB, the Trademark Trial and Appeal Board Manual of Procedure (TBMP) governs the rules and process of Cancellation proceedings. For example, the TBMP governs pleadings, the discovery process, motions, evidence, oral arguments and more. The TBMP can be found on the USPTO website in full here.
Cover page and table of contents of the TBMP
Where to View Cancellation Proceedings
To follow any case, whether one you are involved in or not, is through the TTABVUE system found on the USPTO website. Users can look up proceedings by the proceeding number assigned at the beginning of the case, the trademark registration number(s) involved in the Cancellation, the trademark, parties, or attorney correspondent.
Screenshot of the TTABVUE search system
Process of Cancellation Proceedings
Petitions for Cancellations can be filed through the online with the USPTO Electronic System for Trademark Trials and Appeals (ESTTA). The fee to file a Petition for Cancellation is $400. After the Petition for Cancellation is filed, the USPTO will assign the Cancellation proceeding with a processing number and create a schedule to resolve the dispute.
Screenshot of ESTTA homepage where a Petition for Cancellation can be filed.
In the example schedule below, the plaintiff (the party that filed the Petition for Cancellation) filed the case thirty days before 6/10/2013. The defendant (the party the Petition to Cancellation was filed against) has thirty days to file an "Answer" to the Petition for Cancellation. If the owner of the the trademark subject to the Cancellation does not respond to the Petition for Cancellation within thirty days, the registered trademark will be automatically cancelled.
Table of dates for Cancellation proceedings as seen on the TTABVUE system
If the trademark owner of the registered trademark timely answers, the two parties will have thirty days to have a Discovery Conference. At the Discovery Conference, the two parties are required to explore settlement options, disclose any expert testimony expected to be used, and discuss what sort of evidence will be requested from the other side. Discovery conferences usually take place on teleconferences between trademark attorneys, if the parties have counsel, or between the parties directly if they are unrepresented. If no settlement is reached, the proceeding will continue to the discovery phase.
During the discovery phase, each party is allowed to collect evidence from the opposing party through interrogatories, depositions, document production and more. The rules for discovery in TTAB proceedings is governed by Section 400 of the TBMP. Often, there are delays through the discovery phase as both sides respond to the other sides requests, often filing motions to try to protect information from being turned over or admitted into evidence by the other side.
Once the evidence is collected, assuming a settlement is still not agreed to, both sides will write their trial briefs. Trial briefs are generally submitted around ten months after the Petition for Cancellation is filed, assuming there are no delays during the discovery phase or extensions are filed by the defendant to respond to the Petition for Cancellation. About forty-five days after the trial briefs are submitted, oral arguments will be scheduled where each side can advocate why they should win the case directly to a TTAB judge.
Do you have any questions about the Cancellation process or do you have a cancellation pending against your registered trademark? Contact us today and we will see if we can help you out.