To Be or Not To Be Cancelled: Trademark Cancellation Procedures - Klein Moynihan Turco LLP

To Be or Not To Be Cancelled: Trademark Cancellation Procedures

Whether you own a registered trademark or contest a trademark registration, it is important to understand the various trademark cancellation procedures. A trademark is a word, phrase, symbol, design, or a combination thereof, that identifies and distinguishes the source of goods/services. A trademark is ineligible for registration with the United States Patent and Trademark Office (“USPTO”) if it fails to identify and distinguish the source of a good/service (e.g., it is similar to an existing trademark, generic, or unused). If a third party succeeds in registering such a trademark, you can use various procedures to request that the mark’s registration be canceled.

TTAB Trademark Cancellation Proceedings

A petitioner can request that a trademark be canceled by filing a “Petition for Cancellation” with the Trademark Trial and Appeal Board (the “TTAB”) and paying the relevant fee. The defendant/respondent will then file an “Answer” in response, explaining why the registration is valid and should not be canceled. In this type of cancelation action, a petitioner can only argue for cancelation on the basis that the contested trademark violates its own trademark rights (e.g., likelihood of confusion). Accordingly, if the TTAB finds that the contested trademark violated the petitioner’s rights, it will cancel the registration of such a trademark. Such actions must be brought within 5 years of the mark’s registration date.

New Trademark Cancellation Proceedings

Recently, the USPTO enacted two new trademark cancellation procedures, which anyone may initiate to clear unused marks from the federal trademark registry. A petitioner can request the cancellation of a trademark (or some of its classes of goods) if it was: 

  1. never used, by initiating an Expungement Proceeding; or 
  2. not used on or before a particular relevant date, by initiating an Reexamination Proceeding

An expungement proceeding may only be requested between the 3rd and 10th year after a mark’s registration date. Please note that the 10-year limit on filing will be suspended until December 27, 2023. In addition, a reexamination proceeding must be requested within 5 years after registration. To institute either proceeding, a person must submit a petition to the USPTO Director and pay a $400 fee for each class of good or service for which cancellation is requested.

Court Ordered Trademark Cancellation 

A plaintiff may seek trademark cancellation through the court system rather than the TTAB. Historically, the USPTO has respected court decisions to cancel trademark registrations. Recently, the USPTO codified its practice of complying with court orders that cancel or affect a trademark registration provided that the court submits a certified copy of its order to the USPTO. 

If you are interested in learning more about this topic or require assistance in connection with registering or contesting a trademark, please e-mail us at: info@kleinmoynihan.com, or call us at (212) 246-0900.

The material contained herein is provided for informational purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.

Photo by Bernd Klutsch on Unsplash

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