Does it make sense to file a trademark cancellation?
The decision to cancel a registered trademark is not an easy one. You’re about to embark on a journey where you and your IP attorney must take the lead and drive the case forward. There may be more timely and cost-effective options if particular registrations are blocking you from achieving certain results. Here are some useful tips and guidelines to help you determine whether filing a cancellation action with the Trademark Trial and Appeal Board (TTAB) is the wisest route to pursuse.
Why do you want to cancel a registered mark?
It helps to start with the reasons why you may want to kill a federal trademark registration. Perhaps, the registered mark is cited by the USPTO trademark examining attorney as a basis for a likelihood of confusion rejection in your pending application, and you arguably have valid and timely grounds for filing a TTAB cancellation action. You may also find that your ecommerce product listings on Amazon are being blocked due to an infringement claim by the registration owner (“registrant”).
Before rushing into a potentially long legal battle, consider whether any amicable resolutions should be first explored. For example, does it make sense to propose a trademark coexistence agreement with the other side before starting a cancellation proceeding? I’m not advocating that an initial friendly proposal is the best tactic in every adversarial situation, but an amicable suggestion is at least worth considering in every instance before taking a more aggressive approach.
If you have given the upfront friendly approach due consideration (and hopefully discussed it with your IP attorney) and still believe that the best approach now is to file a cancellation proceeding, then walk through the following checklist with your IP attorney.
Is a partial cancellation feasible?
All-or-nothing is not the only way to cancel a registered mark. Sometimes, there are only certain goods or services that present a problem. It may be preferable to take a surgical approach in targeting only certain items in the identification of goods/services in the registration.
How to cancel a trademark registration: Cancellation Checklist
Here is a helpful list of issues to consider before filing a Petition to Cancel.
- Trademark Priority: If the basis of your claim is likelihood of confusion, you want to doubly make sure that the priority date of your mark beats those of the registered marks.
- Registration less than 5 years old? A registration that is over 5-years old cannot be challenged on certain grounds, such as priority.
- Grounds for cancellation: Your potential grounds for cancellation should be thoroughly analyzed and cross-checked against the timing of your petition to cancel, especially if the registration is approaching its 5-year anniversary [see TBMP 309.03(c)].
- Suspend your pending applications: If there are any outstanding Office Actions in your applications citing the registered mark you’re seeking to cancel, you should timely request that your pending applications be suspended pending the outcome of the cancellation.
- What potential defenses and counterclaims might the registration owner bring against you?
Second chance if you’re too late in opposing trademark
When a pending application is published for opposition, the general public has a 1-month window to oppose the application or request an extension of time for opposing. If the publication period has already passed, anyone with standing may still challenge the resulting registration by filing a cancellation.
How much does a trademark cancellation cost?
Our firm provides a flat fee schedule for TTAB trademark oppositions and cancellations. You will notice that our attorney’s fees become variable during the discovery phase since the amount of discovery to request and review will be uncertain. Certain forms of discovery, such as depositions, require extensive preparation which leads to high attorney’s fees. Keep in mind that attorney’s fees can vary widely during the discovery phase, motion practice and trial phase.
TTAB proceedings are typically less expensive than trademark litigation in federal court for a few key reasons:
- There are no court hearings, so your attorney does not have to make any personal appearances. All filings are done in writing and submitted electronically.
- Discovery depositions are less frequent in TTAB proceedings than in federal court lawsuits.
- There is generally less at stake in a trademark cancellation, which deals only with the issue of registration, than a federal lawsuit which often deals with trademark infringement and corresponding money damages and injunctions.
- Overall, the pace of an average TTAB proceeding is slower than a typical federal court lawsuit. While extensions of time are common in both venues, the TTAB is notorious for taking a long time to resolve even minor issues (e.g., discovery disputes such as motions to compel).
How to settle a trademark cancellation
A successful trademark cancellation strategy does not necessarily require a canceled registration as the only outcome. Often times, both sides can find a way to coexist especially if the respective products are not competitive. Being open-minded and creative throughout the cancellation proceeding can often lead to a win-win outcome.
Has a cancellation been filed against your trademark registration?
If you are on the receiving end of a petition to cancel, here is a helpful post on defending against a TTAB trademark cancellation.
5-year Deadline for Petition to Cancel
No time limit applies to grounds under 15 USC 1064(3) [§ 14(3)] including, but not limited to: