How to Defend a Trademark Cancellation

What is a trademark cancellation?

A trademark cancellation is a mini-lawsuit filed with the TTAB to attack a trademark registration. Cancellations deal with only registered trademarks, and not pending applications. A third party may seek to cancel a registration in whole or in part. Here are helpful tips to defend against a trademark cancellation.

Need to defend your trademark registration? Call US patent and trademark attorney Vic Lin at 949-223-9623 or email to explore how we can help you keep your registered trademark.

What court decides trademark cancellations?

Trademark cancellations are typically held before the Trademark Trial and Appeal Board (TTAB) of the USPTO. As a governmental agency, the TTAB has its own set of rules known as the Trademark Trial and Appeal Board Manual of Procedure, or TBMP for short. TBMP rules govern both cancellations and oppositions.

Unlike lawsuits filed in state courts or federal district courts, there are no court hearings in TTAB proceedings that require personal appearance of counsel. Nearly everything is done in writing. If necessary, the parties may request phone conferences with the TTAB interlocutory attorney assigned to the case. An optional Oral Hearing before the Board may be requested towards the latter stages of the proceeding. Most TTAB parties do not request oral hearings.

Who has standing to cancel a registered trademark?

The plaintiff in a cancellation proceeding is the “petitioner.” A cancellation petitioner must have a personal stake in the case and a reasonable basis for believing they are being damaged by the trademark registration.

Standing is typically not an issue for a trademark owner who alleges likelihood of confusion and priority. For trademarks alleged to be merely descriptive, a petitioner may show standing in their interest to use a term to describe their own goods or services.

Can a mark be canceled during the opposition period?

A pending application that has not yet registered cannot be canceled. Instead, third parties may file a trademark opposition when the USPTO publishes the mark for opposition. During the 30-day window, a third party may oppose a trademark application or request an extension of time to oppose. If no opposition or extension of time is filed during the publication period, the application will progress towards registration.

How to defend against trademark cancellation claims

Preparing a proper cancellation defense requires understanding of the reasons for filing a trademark cancellation. Here are some of the more common grounds for cancellation.

Abandonment / Nonuse

Competitors may seek to cancel a registration on the basis of nonuse and/or abandonment. In such cases, registration owners can build a helpful defense by keeping good records of continuous use of the mark from the registration date to the present.

Likelihood of confusion

An owner of an arguably similar trademark, whether registered or unregistered (common law), may seek to cancel your registration on the basis that your trademark is confusingly similar to theirs. Keep in mind that a cancellation claim on the basis of likelihood of confusion and priority must be filed within five years of the registration date.

Generic / Merely descriptive

A party with standing may also seek to cancel your registration on the grounds that the mark is generic or merely descriptive. Such a cancellation claim must also be filed within five years of the registration date.

Informational matter / Failure to function as trademark

The purpose of a trademark is to identify the source of goods and services. It is not to convey information or make a statement. If your mark is on the borderline of conveying informational matter, others may try to cancel your registration on the grounds that the mark fails to function as a source identifier (i.e., as a trademark).

How to defend a trademark cancellation

So, what can you do to form a strong defense to a trademark cancellation? A wise strategy for defending a cancellation action should take into consideration legal costs, timeframe and legal positions.

How much does a trademark cancellation cost?

The initial costs of responding to a Petition to Cancel are generally not excessively high. You’ll want to budget for:

  1. Filing an Answer;
  2. Conducting the mandatory Discovery Conference; and
  3. Serving Initial Disclosures.

According to our firm’s flat fee schedule for TTAB trademark proceedings, the cost for handling the above three tasks would be $3,300 (as of this post date).

After initial disclosures are served, a party may propound discovery requests. The discovery phase is where legal costs can easily get into tens of thousands, especially with responding to document requests, reviewing document production and taking depositions.

How long does a trademark cancellation take?

When a Petition to Cancel is properly filed, the TTAB will issue a trial schedule with deadlines spanning over a one and a half year period (1.5 years) starting from the Time to Answer to the optional Request for an Oral Hearing.

In the fiscal year 2018, the average length of time from the commencement of a trademark cancellation to completion was approximately 140 weeks (about 2.7 years).

What are effective ways to defend against a trademark cancellation?

It should come as no surprise that formulating a smart legal strategy requires close cooperation and good communication with your trademark attorney. Consider whether a fair settlement may be pursued earlier to save money.

Any counterclaims to consider against the petitioner?

Sometimes an effective defense is go on the offense. So consider whether you have valid claims to bring against the other side. If so, you should file counterclaims. For example, the petitioner may own a registered mark which forms the basis of their grounds for cancellation. If their registration has a potential weaknesses, you may need to file timely mandatory counterclaims. Otherwise, you could forfeit the right to pursue counterclaims later.

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