Trademark: Petition to Cancel

by Nicole Rash

Jan 9, 2023 — Trademark Cancellation is the legal process of removing a federally registered trademark from the United States Patent and Trademark Office (USPTO) registers. If successful, this will allow a similar or the same trademark to be registered to a different party. A trademark cancellation is distinguished from an opposition; an opposition is filed before the trademark is registered during the publication phase of the trademark application, while a Trademark Cancellation is the cancelling of an already registered trademark.

To cancel a trademark, the petitioner must file a petition for cancellation through the TTAB (Trademark Trial and Appeal Board). To do so, the petitioner must show two things:  1) there is standing to cancel the trademark; and 2) there are grounds for cancellation.

First, in order to demonstrate standing, the petitioner must show that they will be directly harmed by the registration in some way. This could be because the petitioner mark or business will be weakened by the registered mark or even the already registered mark may hinder the petitioner’s reputation.

Second, it depends on when the registered trademark was granted registration with the USPTO. A cancelation will have different grounds depending on whether the request for cancellation is within five years after the mark was first registered or after five years of registration. For example, grounds for cancellation within 5 Years may include items like:

  • The mark can be confused with your property or business
  • You were using the trademark before the registered owner
  • The registration was fraudulent
  • The mark is generic
  • The mark is deceptive
  • The mark is someone’s last name, is descriptive, or is geographically descriptive
  • The mark dilutes the usefulness or identity of another mark
  • The mark has not been used in the least three years
  • The mark was not being used before registration or the owner never intended to use the mark

The full list can be found at 309.03(c)(1)

However, after 5 years, there are different grounds for cancellation including but not limited to:

  • The registrant does not control the mark or is not able to exercise control over the use of the mark
  • Permits the use of the certification mark for purposes other than to certify
  • Discriminately refuses to certify or to continue to certify the goods or services of any person who maintained the standards or conditions which such mark certifies
  • The registered mark becomes the generic name for the goods or services
  • The mark defines a functional use
  • The registration was obtained fraudulently
  • The registered mark is being used to misrepresent the source of the goods or service
  • The trademark is deceptive in some way
  • The defendant’s application is barred from registration by claim or issue preclusion
  • The trademark is descriptive

Luckily, the USPTO requires electronic filling through the Electronic System for Trademark Trials and Appeals (ESTTA), which requires the petitioner to select relevant grounds for opposition or cancellation, with the required accompanying statement supporting and explaining the grounds.

Petitioning to cancel removes a trademark from the federal register allowing your mark to proceed through prosecution. This process eliminates situations where an individual is illegally maintaining trademark rights, to the detriment of the plaintiff.  This is important because not only does it allow priority, but the plaintiff also gets to remedy the harm, thus allowing for protection of the property of business owners and their ability to compete in a free, fair market.

Questions about petitioning to cancel another registered mark, do not be hesitate to contact us at Gleam Law.