A trademark cancellation is one process available at the Trademark Office for clearing trademarks that, for various reasons, should no longer be registered. Filing or defending a trademark cancellation can be complicated and requires knowledge of nuances of both trademark law and registration practice before the Trademark Office. Below, I review a few main topics to help you understand some basics about trademark cancellation proceedings. This information is general, however, and you should consult with a trademark attorney.
What is a Trademark Cancellation?
All trademark applications undergo review by a trademark examiner at the Trademark Office. While they conduct these reviews carefully, there are limits to the tools and evidence on which an examiner can rely. This can result in the registration of a trademark that probably should not have been registered but nonetheless was, thereby occupying a space and preventing others from registering potentially similar marks.
Other times, a trademark owner may have stopped using its trademark, but, because the time between mandatory renewal work can be so long, the trademark persists on the Trademark Office’s register. Again, this can prevent a business from registering its valid trademark.
In situations like this, a trademark cancellation may be the proper method for removing the “bad” trademark registration from the register. A cancellation is simply the legal process of removing a registered trademark from the Trademark Office’s records, so that is no longer registered.
A trademark cancellation is an inter partes proceeding, instituted by one party against the trademark registration of another. The goal of the filing party is to cancel the trademark registration, usually so that their own trademark can be registered. Winning a trademark cancellation often means removing an obstacle on the path to registering your own trademark.
In this adversarial sense, cancellations are similar to litigation. They are governed generally by the federal rules of procedure and evidence, but occur within the Trademark Office and are therefore typically cheaper and faster than proceedings in federal court.
When can a Cancellation Proceeding be Filed?
You can file a cancellation proceeding at any time after a trademark registers. However, if you file in the first five years of registration, you typically have more grounds on which to base the cancellation. After five years, some of those grounds become incontestable and disappear. However, all marks remain vulnerable to cancellation on certain grounds for their entire lives.
What are the Potential Grounds for a Trademark Cancellation?
To file a petition for cancellation of a registered trademark, you must have standing, which essentially means you must have some good reason to ask that the trademark be cancelled. Usually, this means that you are harmed or somehow affected by the continued registration of the mark. Standing often, but not always, overlaps with the grounds asserted in the petition. For instance, if your business has been using a trademark for twenty years but a newcomer registered a trademark that is similar to yours, you can file a petition to cancel alleging grounds of likelihood of confusion, with standing that your mark cannot be registered because it is similar to an already-registered mark. This shows that you are being harmed by the continued registration of a mark which is similar, but second, to your own.
Before the five-year cutoff, there are a lot of potential grounds for a cancellation proceeding. They include:
- Priority and likelihood of confusion – the registered trademark is similar to your mark, but you used your mark earlier than the registered trademark was used. This is a common ground for cancellation.
- Abandonment – the registered trademark is no longer be used by its owner. This is a common ground for cancellation.
- Generic – the registered trademark is the common, generic name for the goods or services.
- Not rightful owner – the trademark was registered by someone other than its true owner.
- False suggestion of connection – the registered trademark appears to suggest a connection with a person, institution, national symbol, or belief.
- Deceptiveness – the registered trademark is misleading or deceptively misdescriptive of the goods or services.
- Geographically descriptive – the primary significance of the registered trademark is that of a geographic location.
- Geographically deceptive – the primary significance of the registered trademark is that of a geographic location, but the goods or services do not actually originate from that location.
- Fraud – the owner of the registered trademark lied to the Trademark Office during the registration process.
These are just some of the grounds for filing a petition to cancel. Others exist. Moreover, these are not mutually exclusive – multiple grounds can be cited.
What is Included in a Petition to Cancel?
You start a cancellation proceeding by filing a petition. The petition is a document that lays out the grounds and a basic legal argument. The petition is submitted through the ESTTA online filing system which has forms that ask for certain information. The form, and the petition, identify:
- Information about the petitioner, including name and address
- Information about the registrant, including name and address
- The registered trademark, its registration number, registration date, and list of goods and services
- If applicable, information about the petitioner’s trademark and use with goods or services
- Information about any related proceedings
- Legal grounds for the cancellation
- Basic factual grounds supporting the legal grounds
What are the Costs of Filing a Trademark Cancellation?
Currently, the Trademark Office charges a $600 filing fee for each class of goods/services for which the trademark is registered. As an example, if a trademark is registered in connection with two classes of goods and two classes of services, you would pay 4 x $600 in fees, or $2400 in filing fees alone.
If you use a trademark attorney, you will also pay for their services in preparing and filing the cancellation petition. Most trademark attorneys will charge anywhere from $1,000 to $5,000 for this service, depending on the complexity of the matter.
How do You Respond to a Petition to Cancel?
If you receive a petition to cancel, it will be because you own a registered trademark that is being challenged. There is a 40-day time limit for responding.
If you do not respond by the deadline, your trademark may be cancelled. The Office will enter what’s called a “default judgment,” but will actually give you another 30 days to explain why you missed the deadline. If you can show a good reason, the Office will not make the default judgment final.
If you do choose to respond timely, you must do so in an Answer that admits or denies the allegations set forth in the cancellation petition. You might set forth legal defenses or counterclaims against the petitioner.
What are the Stages of a Trademark Cancellation Proceeding?
After the petition to cancel is field, the trademark registrant has the chance to respond with the Answer. The parties are then required to participate in a discovery conference during which they must discuss the possibility of settlement.
If settlement doesn’t emerge from that conversation, the proceeding moves forward to discovery, during which both parties ask for and produce information and evidence to the other party. Then, both parties make their pretrial filings. After that, the parties present their briefs, potentially request oral argument, and then wait for a decision.
Settlement, indeed, is always an escape valve. If the parties come to an agreement at any time, then they can pause the proceedings until they can negotiate, draft, and execute a settlement agreement.
How is a Cancellation Different from other Trademark Proceedings?
There are a few proceedings at the Trademark Office that you can use to challenge the trademark of another party. A cancellation proceeding is one method of challenging a trademark after it has registered.
Before registration, you can challenge a trademark application through an opposition proceeding. Most trademark applications publish for 30 days while being examined. During that period, members of the public can oppose the registration of the application.
Many of the same grounds can be raised in oppositions and cancellations, but there are differences. An opposition can be a crucial way to create leverage against a party, since their trademark application has not yet registered and they probably want it to actually register. A cancellation doesn’t put a trademark owner on its heels the way an opposition does.
Before either a cancellation or opposition, you could also file a letter of protest.
Why Might you file a Petition to Cancel a Trademark?
There are a variety of reasons why you might start a cancellation proceeding. However, usually, you file a cancellation action against a trademark that has been cited against your application.
If the Trademark Office has refused to register your mark because there is a similar one already registered, you may want to attack it, especially if you are unable to argue around the refusal or enter into a consent agreement with the owner. By filing a cancellation proceeding against the blocking mark, you may be able to clear the obstacle completely, or you might be able to force the other side to enter into a consent agreement.
Filing a cancellation proceeding is something that must be approached carefully. It can take a lot of time and can be expensive, and there can be downstream consequences. If you are considering cancelling a trademark registration, or if you have received a cancellation petition, please feel free to contact me, Phoenix trademark attorney Tom Galvani, at 602-281-6481.