Trademark cancellation is generally a streamlined procedure to remove a trademark registration from the federal register. It is streamlined compared to filing a federal lawsuit, though the case proceeds in a very similar manner. The primary difference is that a monetary award is not possible in a trademark cancellation.
Exactly when to file a trademark cancellation and when to file a trademark lawsuit depends on the specific circumstances of the case. You should consult a trademark attorney for this process, as you would with any other civil lawsuit.
What is a Trademark Cancellation?
Trademark cancellations are filed when a trademark owner wants to remove an existing registration. There are many reasons why a trademark owner might choose to do this. An application for federal registration might have been blocked because of an existing trademark. In that case, the rejected applicant might attempt to get the adversarial trademark cancelled.
If a party believes their rights are being infringed upon by a registered trademark, they have the right to try to cancel the infringing trademark. These matters are handled by the U.S. Trademark Trial and Appeal Board (TTAB). The first step in trademark cancellation is to file the Petition for Cancellation.
Grounds for Cancellation
The grounds for cancelling a trademark are outlined by 15 U.S.C. Section 1064. Below are the common grounds on which you can cancel a trademark.
- Priority of Use: In order to successfully cancel a trademark on priority of use grounds, you need to prove that you were using the trademark in commerce first or that you filed a trademark application first. This requires you to have a prior filing date or dated specimens that demonstrate priority of use, such as a website sample, advertisement, or invoice.
- Abandonment: For a trademark to be valid, the owner must renew the registration in the first six years and then every ten years. To do this, the trademark owner must submit renewal fees and demonstrate that the trademark is still being used in commerce. If the trademark has not been used in three consecutive years (and you can prove it), you might argue that the trademark has been abandoned by its owner. You must also prove that the owner has no intention of resuming usage of the trademark, but three years of non-use is presumptive abandonment.
- Generic or Descriptive: In some cases, a challenger of a trademark might argue that the trademark in question is too generic or descriptive to be fairly registered. It is unusual for a trademark to get far along in the registration process if this is the case. However, trademarks can become generic over time, and lose their value. Think “Escalator,” which started as a trademark but is now a generic term.
- Fraud: A registered trademark owner must consistently demonstrate that they are currently using the trademark in conjunction with goods and services and all statements made in applying for the trademark must be true. Trademark fraud occurs when the owner makes false statements in the application, or submits fabricated specimens to prove usage of the trademark. Keep in mind it can be tricky to prove trademark fraud, as the claimant must show that the fraudulent party had an intent to deceive.
When to File a Cancellation Proceeding
You should file a Petition to Cancel as soon as possible because over time certain grounds for cancellation are no longer available. After five years, a trademark cannot be cancelled on certain grounds. However, a petition may be filed for the below reasons regardless of the registration date.
- When the trademark becomes abandoned. This occurs when the trademark has not been in continuous use or if the owner has abandoned it without an intent to resume use.
- When the trademark becomes generic. If a trademark owner is not diligent about defending their trademark rights, trademarks can become generic over time. A petition for cancellation may be filed any time after a trademark loses its distinctiveness.
- When fraud can be successfully proven. You can file a petition for cancellation at any time if you learn that the trademark owner has been fraudulent in their application or renewal.
Petition for Cancellation Proceeding
Once you have filed a petition to cancel, the TTAB will contact you with deadlines and trial dates. Both parties must comply with the timeline laid out by the TTAB.
A cancellation before the TTAB proceeds in much the same way that a federal lawsuit does. There is a discovery phase, which allows both parties request information from the other side to build their case. During this period, the parties can gather information, depose relevant witnesses, and request pertinent documents from the other side.
There are a few reasons why TTAB cases are different from other court proceedings. On the positive side, the fees associated with a TTAB case are often less than they would be in a federal court case. This is because there is less at stake than in other lawsuits, since neither party is seeking damages. The only matter being determined in a cancellation is the status of registration. Additionally, there are no court hearings, so your trademark attorney won’t need to make any in-person appearances until perhaps the very end of the matter. All the submissions for cancellations are completed electronically. You are also more likely to avoid expert witnesses and depositions in a TTAB case which will further cut down on attorney fees. Like federal lawsuits, TTAB cases usually settle early on in the case. If for some reason a settlement does not occur, TTAB cases and federal lawsuits will likely last over a year until a final determination.
Responding to a Petition for Cancellation
You will be notified by the TTAB, and given 40 days to respond, if somebody is attempting to cancel your trademark. Failure to respond in 40 days will result in your trademark being cancelled on default. You should seek legal counsel immediately to map out the best strategy for defense. Your game plan will be determined by the grounds of the cancellation and your particular use.
- Likelihood of Confusion: A challenger might come forward if they believe they have common law trademark rights that predate your own and your trademarks are confusingly similar. Your best defense in this case is to demonstrate with proof that you were using the trademark first. Keep in mind that petitions for cancellation filed on these grounds usually can only be submitted within five years of the federal registration date. If you were not the first to use the trademark, then you would try to prove that consumers are not likely to be confused between the two trademarks.
- Abandonment: Similarly, if your trademark is being cancelled on the grounds of abandonment, you need to gather evidence that your trademark is still in commercial use.
- Fraud: If the claimant is alleging fraud, you need to demonstrate that the alleged activity did not take place, or you were not aware that your statements were false.
Sometimes, the best defense is a good offense. You might decide to file a counterclaim against the other party or Oppose or Petition to Cancel one or more of their trademarks. You should only proceed with this route if you are confident that you have valid complaints to launch against the petitioner. For example, the petitioner may own another registered trademark that is related to the current cancellation proceeding that may improve their case. Consult with your legal counsel about your best options going forward.
Other Options to Consider Before Proceeding With Cancellation
If you are not yet sure that you have a winning case for trademark cancellation, you may want to start with a cease and desist letter instead. The response, or the lack of a response, could be telling. Another alternative to a trademark cancellation or sending a cease and desist letter is a coexistence agreement. The agreement typically includes reasons why the parties do not believe their trademarks are likely to cause confusion among consumers. They also often state how the owners are going to amend their behavior to prevent confusion moving forward. However, coexistence agreements weaken trademark rights so they are never the preferred option for either party.
Naturally, not every trademark owner will be open to the idea of signing a trademark coexistence agreement, particularly if they do not believe the other party has leverage. In that case, your best bet might be to proceed with the cancellation.
The quicker you act in response to a trademark infringement and trademark application, the better chances you have of the matter going your way. This means filing a cancellation at the earliest opportunity if it has gotten that far.
Every Tuesday, the USPTO publishes the recently approved trademarks in the Trademark Official Gazette. Trademark owners with a demonstrable interest in the matter have 30 days to oppose the trademark for registration. Many petitions to cancellation are filed due to the failure to respond in this window. You can avoid this error by having your trademark attorney set up a trademark watch. You are also more likely to discover a conflicting trademark if you conduct a trademark search before using a trademark.