A trademark cancellation is a legal challenge to the continued registration of a particular trademark. A trademark cancellation is instituted by filing a petition for cancellation with the Trademark Trial and Appeal Board and paying the required fee. In most cases, a cancellation must be filed within five years of the date that the trademark registration issued. However, there are some limited circumstances under which a trademark registration may be canceled at any time. There are a few thousand trademark cancellations filed every year, which is really only a tiny fraction of the number of trademark registrations that are granted every year by the United States Patent and Trademark Office.
A trademark cancellation must allege one or more grounds for challenging a particular trademark registration. Most often, a trademark registration is challenged by someone who owns prior rights in an identical or confusingly similar trademark. But, a trademark registration can also be challenged on a number of other grounds. For instance, cancellations may be based on the petitioner’s belief that the trademark is no longer in use and has been abandoned, or that the trademark is merely descriptive and not entitled to registration. In addition to alleging a valid ground for cancellation, the petitioner needs to show that it has standing to cancel the registration. In other words, the petitioner must allege in the petition for cancellation that it has a direct and personal stake in the outcome of the proceeding and that it is harmed by the continued registration of the trademark.
Shortly after a petition for cancellation is submitted, the Board will institute the cancellation proceeding, assign it a proceeding number, and notify both parties of the schedule the cancellation will follow. This schedule informs the parties of many important deadlines and dates by which certain actions must be taken. If necessary, the schedule can be pretty easily changed through mutual agreement by the parties and approval by the Board.
Once the cancellation schedule is issued, the owner of the registration has 40 days in which to respond to the petition for cancellation. If no response is filed, a default judgment is entered against the owner of the registration, the cancellation is sustained in favor of the petitioner, and the registration is canceled. If a response is filed, then the cancellation will simply proceed as laid out in the schedule. In the event the owner of the registration is eventually successful in defending the cancellation, the registration will continue to remain in full force and effect. On the other hand, if the Board rules in favor of the petitioner, the worst that can happen is that the registration gets canceled. Under no circumstances can the Board award any type of monetary damages, attorneys’ fees, or other financial compensation to either party.
If you have received notice that a trademark cancellation has been filed against your trademark registration, the first thing you should do is immediately seek the help of an experienced and dedicated trademark attorney. Because a trademark cancellation is a serious and complex legal proceeding that requires specialized knowledge and skills to properly navigate, you will want a trademark lawyer to provide you with valuable advice and guidance throughout the entire proceeding. Your trademark attorney will not only be able to assist you in defending the trademark cancellation, but can also enter into settlement negotiations in the hope of reaching an amicable resolution that is satisfactory to both parties.
If you have any questions about pursing a trademark cancellation against someone else’s registration, or need some help defending a cancellation filed against your trademark registration, please feel free to give me a call for a complementary legal consultation. I look forward to hearing from you soon.