Cancellation Proceeding

By Lia Kopin-Green
/
August 14, 2022

What is a Cancellation Proceeding?

In intellectual property law, a cancellation proceeding is a legal process that provides a complainant with the opportunity to dispute and ultimately cancel someone's trademark rights. These cancellation actions are typically filed with the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). In these cases, the person filing for the cancellation proceeding is referred to as the Petitioner and the defendant is known as the Respondent or the Registrant.

Key Takeaways

  • In a trademark cancellation proceeding, a complainant can dispute and ultimately cancel someone else’s trademark rights.
  • The USPTO’s Trademark Trial and Appeal Board (TTAB) handles these proceedings.
  • Trademark cancellation is often sought by parties who have sustained damage due to the trademark's existence.

Understanding Trademark Cancellations

If the petition for cancellation is accepted by the TTAB, a trademark cancellation proceeding will result in partial or full removal of the trademark from the federal register.

In order to achieve a successful trademark cancellation, the petitioner must prove that they have “standing” in the matter. Simply put, he or she must show that they were directly harmed by the registration of this trademark. A trademark cancellation may be sought in a variety of situations, but a few of the most common grounds for cancellation include:

  • The trademark has become too generic
  • The trademark involved fraud
  • The trademark has been abandoned for at least 3 years since its registration
  • There is likelihood for confusion with a previously registered trademark
  • It dilutes another famous trademark
  • A mark that is merely descriptive, geographically descriptive, or a surname

The Cancellation Proceeding Process

A petition for trademark cancellation must be filed with the TTAB. After filing and paying the required fees, the USPTO will provide a processing number and a schedule. It is important to note that in most cases, the petition must be filed against the respondent within five years from the date of registration of the trademark. 

The respondent may file an Answer in response to the petition. This document typically states why the trademark is valid and provides defenses or counterclaims against the petitioner.

Next, attorneys from both parties will work to submit relevant evidence to build their cases.

Attorneys from both parties will then submit relevant evidence to support their claims. In-person hearings are rare in cancellation proceedings, and all material is sent directly to the TTAB. Most cancellation proceedings are resolved in about 6 months.

Moreover, it is important to remember that there is no hope of receiving compensation or damages after the case is resolved. Instead, the TTAB will simply decide whether to fully or partially cancel a trademark. In some cases, the TTAB may also declare who is the legitimate owner of a trademark.

Bottom Line

Whether you are involved in a trademark cancellation or you need to file one yourself, you are not alone. If you need assistance navigating the cancellation process, reach out to one of our specialized intellectual property attorneys as soon as possible.

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