Trademark Cancellation

Rothwell Figg - The U.S. Trademark Cancellation Law Firm

A trademark cancellation can seriously impact the value of a company's brand. Conversely, it can be brought strategically to remove a competitor's trademark registration from the Registry that is negatively impacting a party's rights.

More information on how to cancel a trademark registration may be found in our informative article here.

Trademark cancellation proceedings are heard before the U.S. Trademark Trial and Appeal Board. Approximately 2,500 U.S. trademark cancellations are filed each year.  The complaint, known as a petition for cancellation, can seek cancellation of a trademark registration in its entirety.  Alternatively, a petitioner can request a partial cancellation of a third-party's registration to remove certain goods or services from the registration.

In the United States, there are numerous grounds to cancel a trademark registration.  These include likelihood of confusion, abandonment of the mark, mere descriptiveness, and fraud in the procurement of the registration.  If a trademark cancellation proceeding has been filed against your company's trademark, you have several options to avoid an adverse judgment.   Rothwell Figg represents both domestic and international companies in trademark cancellation proceedings before the U.S. Trademark Trial and Appeal Board.

This is due in large part to USPTO rules that have resulted in more trademark cancellation proceedings being brought on the grounds of abandonment or non-use of certain goods contained in the registration.

According to 15 U.S.C. Section 1127, trademark abandonment occurs when a trademark's use has been discontinued with an intent not to resume use.  Non-use of three consecutive years shall be prima facie evidence of abandonment.  An intent not to resume use may be found by taking account all objective evidence.  As such, a registrant cannot avoid a finding of trademark abandonment by simply alleging that it had intended to resume use.

To discuss your case, please contact James Hastings of Rothwell Figg for a complimentary consultation.

The Trademark Trial and Appeal Board recently released its TTAB filing statistics for fiscal year 2018.   These updated figures include year-to-year changes in the filing of appeals, notices of oppositions, and petitions for cancellations.  It also provides useful information on the disposition of cases.

Highlights include the following:  (percentage in parentheses signifies change over 2017)

Trademark cancellation proceedings based on abandonment continue to present challenges to trademark registrants.   In the latest case before the US Trademark Trial and Appeal Board, however, the registrant’s trademark registration was spared.

In AD5 Inc. v. Jennifer M. Estes dba #SELFiE T’s, the Petitioner sought to cancel Reg. No. 4642072 of the Registrants #SELFIE

Trademark Cancellation and Abandonment Issues [Case Study]

Trademark cancellation due to abandonment is the subject of a recent decision by the Trademark Trial and Appeal Board.

In Yazhong Investing Ltd. v. Multi-Media Tech. Ventures, Ltd., the Petitioner sought to cancel four registrations of the Respondent.  The grounds for cancellation were fraud and abandonment.   Petitioner also

Food for thought.  A trademark cancellation may result from abandonment of a trademark.

In Local Foods LLC v. Foodsmith Bowen Osborn, the Petitioner sought cancellation of Registrant’s FOODSMITH and Design trademark for “health food, namely freshly prepared meals consisting primarily of local and organic meat, fish poultry, vegetables, properly proportioned, for delivery and pickup”