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.
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.
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.
The procedures to litigation opposition and cancellation proceedings are substantially similar and are explained here.
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.
For more information about trademark cancellation proceedings, contact Revision Legal’s team of experienced trademark attorneys through our contact form, or by calling 855-473-8474.
Editors note: this post was originally published in March, 2015. It has been updated for accuracy and comprehensiveness.
Trademark cancellation proceedings are authorized by Section 14 of the Lanham Act, 15 U.S.C. § 1064. The statute creates two distinct windows for filing a cancellation petition that turn on the age of the registration. Understanding which window applies determines what grounds are available.
For marks registered for less than five years, a petitioner may seek cancellation on any ground that would have justified refusing registration in the first place—including likelihood of confusion, mere descriptiveness, geographic descriptiveness, or false suggestion of a connection with persons, institutions, beliefs, or national symbols under Section 2(a). This broad window reflects the fact that a recently registered mark has not yet acquired the presumption of validity that comes with incontestability.
For marks registered for more than five years, the grounds narrow significantly. Once a mark has been registered for five continuous years, the registrant may file an affidavit of incontestability under 15 U.S.C. § 1065. An incontestable mark cannot be cancelled on grounds of likelihood of confusion or mere descriptiveness. Instead, cancellation is limited to grounds that may be raised “at any time,” including: the mark has become the generic name for the goods or services; the mark has been abandoned; registration was obtained through fraud on the USPTO; or the mark is functional.
Certain grounds for cancellation are not subject to the five-year limitation. These “at any time” grounds under Section 14 of the Lanham Act include:
Abandonment is among the most commonly litigated grounds for cancellation. Under 15 U.S.C. § 1127, a mark is deemed abandoned when its use has been discontinued with intent not to resume such use. Three consecutive years of non-use constitutes prima facie evidence of abandonment, shifting the burden to the registrant to show that it either resumed use or never intended to abandon the mark.
Abandonment can also arise from “naked licensing”—a situation where the trademark owner licenses the mark to others without exercising adequate quality control over the licensees’ goods or services. When a licensor fails to police quality, the mark ceases to function as a reliable source indicator and can be deemed abandoned. See FreecycleSunnyvale v. Freecycle Network, 626 F.3d 509 (9th Cir. 2010).
When a registrant receives a Petition to Cancel, the initial 40-day deadline to file an Answer is critical. Failing to answer results in entry of default, and the TTAB will cancel the registration without reviewing the merits. The Answer must specifically admit or deny the allegations and set forth any affirmative defenses—such as laches, acquiescence, or estoppel—that the registrant intends to raise.
Beyond procedural defenses, substantive defenses vary by the ground raised. Against an abandonment claim, the registrant should marshal evidence of continuous use: sales records, invoices, advertising materials, website screenshots, and other documentation demonstrating that the mark remained in active commercial use throughout the period at issue. Against a fraud claim, the registrant must rebut the allegation of a knowing material misrepresentation, which requires clear and convincing evidence under the standard set in In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009).
The interplay between cancellation and incontestability creates important timing considerations for trademark owners. A registrant whose mark has been on the register for five continuous years should file a Section 15 affidavit of incontestability as soon as it becomes eligible. Incontestability is not automatic; the registrant must affirmatively claim it. Once granted, incontestability substantially narrows the grounds on which a competitor may seek cancellation, significantly hardening the registration against attack.
Registrants who have not yet filed their Section 15 affidavit should do so without delay. Conversely, parties considering whether to file a cancellation petition against a competitor’s mark should evaluate whether the mark is approaching or has already crossed the five-year threshold, as doing so before that date preserves the full range of available grounds.
Revision Legal’s trademark attorneys represent both petitioners and registrants in TTAB cancellation proceedings. If you need to challenge a competitor’s registration or defend your own, call us at 855-473-8474 or complete the contact form on this page.
Parties evaluating whether to pursue a cancellation proceeding before the TTAB or an infringement action in federal district court should understand the strategic tradeoffs. A TTAB cancellation proceeding is generally faster and less expensive than federal litigation, and it is available to any party with standing—not just those with a viable infringement claim. Cancellation is the right vehicle when the primary goal is eliminating the registration that gives the adverse party nationwide priority rights and the legal presumption of validity.
Federal court litigation, on the other hand, is necessary when the party also seeks damages, an injunction against use, or when new evidence not in the TTAB record is important to the case. Some parties pursue both paths simultaneously or sequentially. The Supreme Court’s decision in B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. 138 (2015), means that a TTAB determination on likelihood of confusion can have preclusive effect in subsequent infringement litigation—making the TTAB proceeding consequential even when the ultimate remedy sought is a federal court injunction. Experienced trademark counsel can help evaluate which forum best serves the client’s specific goals.
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