Trademark Cancellation

Trademark Cancellation Proceedings

Registering a trademark with the United States Patent and Trademark Office (USPTO) doesn’t mean it’s set in stone forever. In some cases, a registered trademark can be challenged and removed through Trademark Cancellation Proceedings. This process allows individuals or businesses to petition for the cancellation of a trademark if they believe it was improperly granted or is no longer valid.

At Kinhal Law PLLC, we help businesses protect their brands by challenging improperly registered trademarks and defending against cancellation petitions. Whether you need to remove a conflicting trademark or protect your own, understanding the Trademark Trial and Appeal Board (TTAB) cancellation process is crucial.

What Are Trademark Cancellation Proceedings?

Trademark cancellation proceedings are legal actions filed with the TTAB to request the cancellation of an existing trademark registration. Unlike trademark opposition (which occurs before a mark is registered), cancellation challenges a trademark that has already been approved and registered.

These proceedings can be initiated by any party who believes they are harmed by the registered mark, including:

Business owners who believe a registered mark is too similar to theirs and could confuse customers.

Competitors who argue that the registered trademark is descriptive, generic, or was obtained fraudulently.

Individuals or companies seeking to clear trademarks that have not been actively used in commerce.

If a cancellation petition is successful, the trademark is removed from the federal register, and the owner loses its legal protections.

Common Grounds for Trademark Cancellation

There are several reasons why a trademark might be subject to cancellation. Some of the most common include:

1. Abandonment

A trademark can be canceled if the owner has stopped using it in commerce for typically three consecutive years without a valid reason. Non-use suggests the owner no longer has an interest in the mark, making it available for others to claim.

Evidence of abandonment can include:

No sales or marketing under the trademark.

Lack of renewal filings with the USPTO.

Statements from the owner indicating they no longer use the mark.

2. Likelihood of Confusion

If a registered trademark is too similar to an earlier-used mark, and it creates confusion among consumers, the registered mark may be canceled. This ground for cancellation is often used when a business misses the chance to oppose a trademark during the opposition period.

3. Genericness

Some trademarks become too common over time and lose their distinctiveness. When a trademark becomes generic, it can be canceled because it no longer identifies a specific business.

Examples of trademarks that became generic and lost protection include:

“Escalator” (originally a brand, now a general term).

“Aspirin” (once a trademark, now widely used for any pain reliever).

If a trademark owner fails to protect their mark from generic use, it can become vulnerable to cancellation.

4. Fraud in Registration

If a trademark owner provided false information during the application process, the registration can be canceled. Fraud occurs when the applicant:

Misrepresents how the mark is being used.

Submits false claims about prior rights.

Intentionally withholds important information.

Fraud claims are serious and require strong evidence to succeed.

5. Trademark Dilution

If a trademark is so well-known that another similar mark could weaken its distinctiveness, it may be subject to cancellation. This applies to famous brands that could be harmed by similar but unrelated trademarks.

For example, a business attempting to register “Googel Computers” or “Goggle Computers” might face cancellation if Google argues that the new mark dilutes their famous brand.

6. Misuse or Misrepresentation

A trademark can also be canceled if the owner:

Fails to properly control its use under a licensing agreement (leading to abandonment of the mark).

Uses it in a misleading or deceptive way.

The registered trademark is considered to have functional features.

If a business can prove that a trademark owner has misused or misrepresented the mark, cancellation may be granted.

The Process of Trademark Cancellation

At Kinhal Law PLLC, we help businesses navigate the TTAB cancellation process. Here’s how it works:

Filing the Petition for Cancellation

The process begins when the petitioner (the party requesting cancellation) files a Petition for Cancellation with the TTAB. This document includes:

The legal grounds for cancellation.

The petitioner’s interest in the case.

Supporting evidence (such as proof of non-use or likelihood of confusion).

The petition must be filed within the appropriate time frame:

Within five years of registration for most claims.

At any time if the mark has become generic, abandoned, or was obtained fraudulently.

The Trademark Owner’s Response

Once the petition is filed, the trademark owner (registrant) has 40 days to respond. They may:

Deny the claims and defend their trademark rights.

Attempt to negotiate a settlement (such as agreeing to limit the trademark’s scope).

Voluntarily cancel the trademark if they no longer wish to fight the case.

Discovery Phase

If the case moves forward, both parties enter discovery, a phase where they exchange evidence and gather information. This may include:

Interrogatories (written questions answered under oath).

Document requests (such as proof of trademark use).

Depositions (oral testimony taken under oath).

Discovery helps both sides strengthen their arguments before the case is decided.

Trial and Legal Briefs

Most TTAB cases do not involve a courtroom trial. Instead, both parties submit written legal arguments (briefs) along with supporting evidence. However, in some cases, oral arguments may be presented before the TTAB panel.

TTAB Decision

Once all evidence and arguments are submitted, the TTAB issues a decision, which may result in:

Cancellation of the trademark (if the petitioner wins).

Trademark remains registered (if the registrant successfully defends it).

A settlement or modification of the trademark’s registration.

Either party can appeal the decision to the U.S. Court of Appeals for the Federal Circuit or file a new case in a U.S. District Court.

Why Trademark Cancellation Proceedings Matter

Whether you are trying to cancel a problematic trademark or defend your own, TTAB cancellation proceedings can have a major impact on your business. Successfully canceling a trademark can:

Prevent customer confusion by removing conflicting trademarks.

Protect your brand’s strength by eliminating generic or misleading marks.

Free up valuable trademarks for future business use.

On the other hand, defending against cancellation is crucial if you want to maintain exclusive rights to your brand and avoid costly rebranding efforts.

How Kinhal Law PLLC Can Help

At Kinhal Law PLLC, we provide strategic legal representation in TTAB cancellation proceedings by:

Evaluating your case to determine if cancellation is the right move.

Filing strong petitions with well-supported legal arguments.

Defending against cancellation claims to protect your brand.

Negotiating settlements when possible to save time and costs.

Handling appeals if the TTAB decision is unfavorable.

If you need to challenge a trademark or defend against cancellation, we’re here to help. Contact Kinhal Law PLLC today to discuss your trademark concerns. Visit www.kinhallaw.com to learn more.

Trademark Cancellation