How to Cancel a Registered Trademark
As recently as a year ago, this article would have been written quite differently. A trademark cancellation filed with the TTAB would have been the only procedure to discuss. We’ll certainly delve into a TTAB cancellation in this post, but we now have a couple more ways to cancel a trademark registration. What is great about having more options to cancel a trademark registration is that you can control how much leverage you wish to maintain over the trademark owner.
Filing a TTAB Trademark Cancellation to Maintain Leverage
A TTAB trademark cancellation is a 2-party adversarial battle between the challenger and the trademark registration owner. This is what inter partes means. The challenger is called the petitioner while the registration owner is the respondent.
In a trademark cancellation, the petitioner has the power to withdraw the case. For example, if the parties reach a settlement, the petitioner can file a withdrawal of the cancellation. That ability to stop the case is what gives a challenger leverage.
One potential drawback of a trademark cancellation is the cost. In particular, the ongoing legal costs of a trademark cancellation can add up if the other side fights back vigorously.
If you want to reduce your costs, you may have to give up leverage as discussed below.
How to Cancel a Trademark Registration Without a lot of Money
Instead of a 2-party legal proceeding, you can request a single party challenge to a trademark registration. Known as ex parte, a single party proceeding is conducted solely between the trademark registration owner and the USPTO. After your challenge is granted, you as a third party are no longer involved in the legal proceeding.
Two such ex parte options exist for challenging a trademark registration: expungement and reexamination. Introduced under the Trademark Modernization Act (TMA), they both involve nonuse of the registered mark. Each nonuse challenge can be significantly cheaper than filing a TTAB cancellation proceeding.
Expungement is a type of proceeding to challenge a registered trademark that allegedly has never been used. Expungement requests can be filed only against registrations between 3 years and 10 years.
Reexamination is a proceeding that takes a closer look at whether usage was actually made by the trademark owner during certain critical stages of the trademark application process. A trademark reexamination request can be filed only against registrations younger than 5-years old.
Both expungement and reexamination requests can be substantially less expensive than litigating an adversarial TTAB cancellation case. The work is done upfront in laying out the case for canceling the trademark, and the rest is up to the USPTO.