A trademark cancellation proceeding is an administrative proceeding, similar to a civil federal lawsuit, before the Trademark Trial and Appeal Board (TTAB) in which one party requests that a registered trademark be cancelled.
In other words, a mark that has successfully made its way through the trademark registration process still remains subject to cancellation by a party with proper grounds. To read more about the proper grounds for a cancellation proceeding, click here.
Who Can File a Petition to Cancel?
Any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125 (c) of the Lanham Act, by the registration of a mark on the principal register, may file a petition to cancel. To learn more about the concept of standing, click here.
The person or business filing the Petition to Cancel is called the Petitioner while the other party is generally referred to as the Registrant.
What is Contained in a Petition to Cancel?
The Petition to Cancel is similar to a Complaint in federal or state court. Specifically, it contains a caption of the parties involved followed by numbered paragraphs which state the factual background, the grounds for cancellation, and the request for relief.
What is the Procedure in a Trademark Cancellation Proceeding?
The procedures to litigation opposition and cancellation proceedings are substantially similar and are explained here.
What is the Outcome of an Trademark Cancellation Proceeding?
If the petitioner prevails, the registrant’s federal registration is cancelled. If the Registrant prevails, his or her registration continues. There are no money damages at stake; rather, the only issues at play are the registration rights of the marks in question.
The parties should remember that settlement is always an option. Many times, the finality of settlement is a preferable outcome for all involved. Typically, settlement in a trademark cancellation proceeding is accomplished through the use of a “concurrent use” agreement. That agreement sets the rules for each party to use their own marks.
Editors note: this post was originally published in March, 2015. It has been updated for accuracy and comprehensiveness.