In order to maintain a cancellation proceeding against a federally registered mark, the party arguing for cancellation (the petitioner) must plead (1) that it has standing to petition to cancel because it is likely to be damaged by the registration and (2) that there are valid grounds why the registration should not continue to be registered. The controlling federal statute allows for cancellation proceedings to be filed up to five years from the disputed mark’s registration based on certain grounds, or, if the disputed mark has been registered for more than 5 years, specific statutory grounds listed below.
Standing – Claiming Damage
Petitions to Cancel are generally filed with, and heard by, the Trademark Trial and Appeal Board (TTAB). However, a federal court also has the power to cancel trademarks if an issue arises in a case that is litigated before that court. When filing with the TTAB, a petitioner can show standing by showing that continued registration of the disputed mark will somehow damage the petitioner. This is a very low bar. A petitioner does not need to show actual damages, just enough facts to support a belief in likely damage. The TTAB is mostly concerned with weeding out “mere intermeddlers,” like mark owners asserting another party’s rights to attack a competitor.
Grounds for Cancelling a Trademark – a Legal Footing
Along with a belief in damages, a petitioner must also claim grounds for cancelling a trademark under the law. Grounds for cancellation can be divided up into two categories: “within 5 years of registration” and “any time.” Unsurprisingly, the first category can only be claimed within 5 years of the disputed mark’s registration.
Within 5 Years of Registration
If filed within 5 years of the disputed mark’s registration, the petitioner can claim any ground that an opposer could have claimed in opposing the registration of the mark.
The most common grounds are based on:
(1) a mark that is likely to confuse;
(2) a merely descriptive, merely geographically descriptive mark, or a mark that is merely a surname;
(3) a mark that falsely identifies the source of goods or services;
(4) an absence of a bona fide use of defendant’s mark in commerce prior to the filing of the use-based application, or that there was no bona fide intent to use the mark when the applicant filed an Intent to Use application;
(5) an abandonment of a mark of at least 3 years;
(6) fraud having been committed in registering the mark; and
(7) the disputed mark dilutes another famous mark.
After 5 Years
If the dispute mark has been registered for more than 5 years, the only grounds for cancelling a trademark that are available to a petitioner are:
- the mark has become generic;
- mark is “functional”;
- the mark has been abandoned;
- fraud was committed in registering the mark;
- the mark comprises immoral or scandalous matter, or deceptive matter;
- mark disparages or falsely suggest a connection with persons, living or dead, or institutions, beliefs, or national symbols;
- the mark misrepresents goods or services; and
- mark is not, or cannot, be controlled by the registrant.
Most notably lacking is a “likelihood of confusion” of claim. “Likelihood of confusion” cannot be asserted after 5 years of registration.
While various grounds exist for filing a Petition to Cancel, almost all of them require some sort of legal argument. The TTAB has an expansive body of case law and procedural rules that make litigating before the Board tough. Because of this, parties seeking to file a Petition to Cancel a federally registered trademark should contact an expert trademark attorney to assist them in the process. Revision Legal Attorneys have years of experience before the TTAB, and can be reached at 855-473-8474 for a consultation.
Editors note: this post was originally published in February, 2016. It has been updated for accuracy and comprehensiveness.