How to Cancel an Incontestable Trademark
But an incontestable trademark is not immune from any challenge. One very common tool trademark owners can use to boot other marks from the Federal Register is what’s called a Cancellation Proceeding. This is a hearing before the Trademark Trial and Appeal Board (TTAB) that allows a petitioner to argue that a mark currently on the Federal Register should be removed for any of a variety of reasons. With incontestable trademarks, that list is shorter. However, there are still three main ways in which incontestable trademarks can be cancelled: genericness, abandonment, and misrepresentation.
It should also be noted that there are other ways to “attack” an incontestable mark outside of a Cancellation Proceeding. For instance, the strength of the mark can still be attacked.
One way in which an incontestable trademark can be attacked is by arguing that the mark has become generic.
A trademark becomes generic once the relevant consuming public associates the mark with the “genus” of the goods or services. Put simply, a mark becomes generic when the public uses the mark as a term to define the product itself.
A great example of this is Escalator: once a company that manufactured and sold moving-staircase-machines, now just the term used to describe moving-staircase-machines. While a mark may be incontestable (as Escalator was), once it becomes generic, it can be cancelled.
Abandonment is one of the most common reasons to cancel a trademark. The doctrine is basically what it sounds like—trademarks can be abandoned by non-use. However, this “non-use” must also be accompanied by an intent to not use the mark.
Click here to read up on the legal details regarding abandonment of trademark rights.
In general, seasonal abandonment is not reason enough to cancel a mark, and the law in the U.S. gives trademark owners three full years of non-use before saddling the mark with a presumption of abandonment. However, even incontestable marks—marks that were registered and in use for at least 5 years—can be abandoned. And because they can be abandoned, they can be cancelled.
Finally, even an incontestable trademark can be cancelled if the mark misrepresents the source of goods or services. This type of claim is grounded in the goodwill-based common law doctrine of “passing off,” which bans the “passing off” of one’s goods as those of another. The key to a misrepresentation claim is confusion: if consumers would be confused into thinking that a mark represented a source that a mark does not really represent, it can be cancelled for misrepresentation.
An example of this would be if a soft-drink manufacturer called itself Coca-Cala and used a red can and cursive, white font, misrepresenting itself by trying to look like Coke’s can and script. Consumers might be confused into thinking Coco-Cala is Coke. Even if the Coco-Cala mark somehow made its way on to the Federal Register, and survived there for five years, it could be cancelled for misrepresentation.
The procedure for maintaining a cancellation proceeding with the TTAB is complex. If you need help identifying an incontestable trademark, or would like assistance in petitioning the TTAB to cancel a federally registered trademark, please give the expert trademark attorneys at Revision Legal a call at 855-473-8474.
Editors Note: This post was originally published in February of 2016. Is has been updated for comprehensiveness and clarity.