A third party can file a Petition to Cancel with the USPTO in order to seek a registered trademark to be cancelled and thereby removed from USPTO’s registry. The petition triggers a trademark cancellation proceeding before the Trademark Trial and Appeal Board “TTAB” where parties present their cases.
The proceeding involves brief filings, discovery, evidence presentation (depositions & interrogatories) and a hearing (if requested but rare) phase. After this “trial-like” proceeding, the TTAB (with a panel comprised of 3 judges) will issue its decision and either cancel the trademark or sustain it. Therefore, with the trademark cancellation proceeding, the TTAB does not award damages or any other monetary relief, it either cancels or sustains a registered trademark.
If you have an intention to seek a registered trademark to be cancelled or you have received a notice from the TTAB that your registered trademark has been challenged, you should consult with a trademark trial and appeal board attorney regarding to the proceedings.
How to File a Petition to Cancel?
A Petition to Cancel can be filed electronically with the USPTO. A successful petition must have standing and one of the legal cancellation grounds. It is important that the petition is brought before the mark’s fifth year on the registry. Generally, it is more difficult to bring a successful petition once a trademark is registered for more than 5 years due to limited cancellation grounds.
If a Petition to Cancel is filed within the first 5 years of the mark’s registration, a petitioner may also rely on one of the grounds that are also available for filing a Notice of Opposition against a pending trademark application.
Among other grounds, Petition to Cancel can be based on one of the following grounds if filed within the mark’s first 5 years:
• The mark is confusingly similar (“likelihood of confusion” ground) to an existing trademark, which might confuse the target consumer as to the source of the goods or services,
• The mark is not in use,
• Absence of good faith intent to use the mark,
• The mark is abandoned,
• Fraud during the mark’s registration,
• The mark is generic or merely descriptive or
• The mark is deceptive.
If based on valid standing and legal grounds, a well-written petition to cancel would be more likely to cause a trademark owner to refrain from filing an Answer to the Petition to Cancel. Because once contested, the cancellation proceeding before the TTAB skips to next stages (discovery, evidence presentation and trial —if requested but rare) and become costly for both of the parties. Therefore, parties of a trademark cancellation proceeding often try to settle the dispute when a petition to cancel is first filed or in the early stages of the proceeding.