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Understanding Trademark Cancellations

Fri Jun 17th, 2022 by  Trademarks

Registering a trademark is one of the most effective strategies companies can use to protect their intellectual property (IP) assets. While the process of applying for a trademark registration can be daunting, registration comes with a number of benefits, such as nationwide constructive notice and the right to file a trademark infringement action in federal court. However, once registered, trademarks do not necessarily stay registered in perpetuity. Trademark owners can inadvertently lose their trademark rights, and third parties may petition the United States Patent and Trademark Office (USPTO) to cancel existing registrations in some circumstances. Canceling a trademark registration (or defending against a cancellation) is complex, but an Alabama trademark lawyer can assist you. 

What Are Trademark Cancellations? 

Trademark cancellations are what they sound like: a process for removing a registered trademark from the books, along with all of the rights and benefits to the owner that accompany registration. Generally, parties file petitions to cancel when they believe that their interests will be damaged in some way by continued registration of the mark at issue. For example, let’s say that a trademark owner applies to register a trademark and finds that someone else has already registered that mark. But upon further investigation, the applicant discovers that the existing registered mark has not been used in commerce for several years — a key requirement to maintaining a trademark registration. The applicant could then initiate a cancellation in an attempt to get the existing mark removed and clear the way for his or her own trademark to be registered. Most trademark cancellation proceedings are handled by the Trademark Trial and Appeal Board (TTAB), although federal courts also have the power to cancel trademark registrations. 

Oppositions vs. Cancellations 

Trademark oppositions and cancellations are very similar. They are both typically filed by parties who allege that they will be harmed by the registration of the mark, they both rely on many of the same legal principles, and they are both conducted in the TTAB. The main difference is timing. Oppositions occur before a trademark is registered and are intended to prevent the registration of a mark. Cancellations occur after a trademark is registered and are intended to remove the registered mark from the books. 

Who May File a Petition to Cancel 

Unlike inter partes review proceedings in the Patent Trial and Appeal Board (PTAB), a party who wishes to file a petition to cancel a trademark (known as the “petitioner”) must have standing. This means that the petitioner must be able to show that they will be (or are currently being) directly harmed by the registration. For example, an applicant who is refused registration due to an existing registration likely would have standing to file a petition, as the applicant could show that the existing registration was causing direct harm. 

Grounds for Filing a Petition to Cancel 

Once a petitioner demonstrates that it has standing to file a petition to cancel, it must then state the grounds on which it believes that the registered mark should be canceled. Many of these grounds are the same as those a party may allege in an opposition proceeding. However, some grounds for cancellation may be asserted only within five years of a trademark’s registration.  

For trademarks that have been registered for less than five years, the petitioner may allege that: 

  • The mark creates a likelihood of confusion 
  • The petitioner used the mark before the registrant 
  • There was no bona fide use of the mark in commerce prior to the registration
  • The registrant had no bona fide intent to use the mark in commerce as of the date of application 
  • The registrant is not the rightful owner of the mark
  • The mark is merely descriptive, merely geographically descriptive, or a surname 
  • The mark is deceptive in some way 
  • The mark lacks inherent distinctiveness and has not acquired distinctiveness 
  • The registration was fraudulent 
  • The mark has not been used in commerce for at least three years
  • The mark dilutes another famous mark 

For trademarks that have been registered for five years or more, the petitioner may allege that: 

  • The mark has become generic 
  • The mark is functional 
  • The mark is geographically deceptive 
  • The mark has not been used as a trademark or service mark 
  • The mark represents multiple marks in a single application 
  • The mark has been abandoned by the registrant 
  • The mark consists of the name of a living individual without the individual’s consent
  • The registrant has used the mark to misrepresent the source of its goods or services

There are many grounds on which to initiate a cancellation proceeding, and this list is not exhaustive. For more specific information about your individual case, please consider contacting an Alabama trademark lawyer

How to Avoid a Trademark Cancellation 

If you are an applicant for a trademark registration, cancellation can be an effective tool to remove an unused, fraudulent, or invalid trademark from the register. But if you are a registrant, a petition to cancel can seriously threaten your trademark rights. While there is no way to totally prevent a trademark cancellation, trademark owners can minimize the chances of a cancellation by engaging in proper trademark maintenance. This includes: 

  • Choosing an appropriate trademark from the start (ideally after a thorough trademark search
  • Filing renewals and declarations of use at the appropriate times
  • Keeping your trademark in use in commerce
  • Monitoring your trademark for unauthorized use
  • Enforcing your trademark rights against infringers 
  • Maintaining control over your licensee to avoid allegations of naked licensing (if you license your trademark)   

With counsel from an experienced Alabama trademark lawyer, you can help to ensure that your trademarks remain valid and deliver the full scope of protection you need. 

Learn More about Trademark Cancellations from an Alabama Trademark Lawyer

If you are considering filing a petition to cancel or need to defend your trademark rights in a cancellation, hiring an experienced attorney is the best way to maximize your chances of success. For more information about trademark cancellations, please contact an Alabama trademark lawyer at AdamsIP in either our Birmingham or Huntsville office by calling 251-289-9787 or by using our online contact form.