TRADEMARK CANCELATIONS

HAS A PETITION FOR CANCELLATION BEEN FILED AGAINST YOUR FEDERAL TRADEMARK REGISTRATION?

A trademark cancellation is a process in the United States Patent & Trademark Office’s (USPTO) Trademark Trial and Appeal Board (TTAB) in which one party purposes to cancel another’s trademark registration. Under the law, if any party believes that it will be damaged by the registration of a trademark, it can file a petition in the TTAB and have the trademark allowance reexamined.

THE TRADEMARK CANCELLATION PROCESS

  1. File Petition for Cancelation

  2. Trademark Applicant files Answer to Petition

  3. Discovery

  4. Trial Briefs

YOUR QUESTIONS…

  1. What happens if I don’t respond to a Petition for Cancellation?

  2. Do I need an attorney to respond to a Petition for Cancellation?

  3. How do I file a Petition for Cancellation?

  4. How long do Trademark Cancellation proceedings last?

  5. May I settle the Cancellation?

  6. Is a Trademark Opposition the same as a Trademark Cancelation?

OUR ANSWERS…

  1. You must file an answer to the Petition for Cancellation within the time stated in the order you received from the TTAB to avoid withdrawal of your trademark application. In other words, if you don’t answer, you will lose your trademark. It’s important that you use an attorney because for each numbered paragraph you see, you must indicate the number and then admit or deny the statement, or state that you are without enough information to admit or deny the statements made. It is possible that you may have certain defenses that should be stated as well. If the defenses are stated in your answer, they are lost and can’t be used later.

  2. Yes. Cancellation Proceedings within the TTAB are quasi-litigation. There is a complaint, answers, motions, depositions, and a trial. Unless you are a trademark attorney (and even if you are), you’ll need a good trademark attorney to represent you.

  3. A Petition for Cancellation must be filed within the TTAB, asserting all facts necessary to support each argument for withdrawal of the trademark application. It’s presented in the form of a civil lawsuit complaint.

  4. Trademark Cancellations generally take 18-36 months to be resolved. A decision is generally rendered within 10 weeks of the submission of Trial Briefs.

  5. Yes. The parties are required to discuss settlement. Most trademark cancellations are eventually settled. But, some never settle.

  6. A Trademark Opposition occurs during the 30-day Opposition publication window that occurs after a trademark application has been allowed. Cancelations may be filed on issued trademarks only. For trademarks that have been registered in the USPTO, the grounds for challenging the trademark are limited. For example, a mark registered and in use for more than five years, will not be canceled for being descriptive of the goods are services associated with the trademark.