Trademark owners often have situations where their trademark application has been refused by the U.S. Patent and Trademark Office due to a preexisting trademark registration. If the refusal to register is maintained, then filing a petition for cancellation of the cited trademark registration may be an effective means to ensure that their trademark rights are perfected.
What is a Petition for Cancellation? In the United States, trademark owners have the right to cancel a trademark registration of any other party that it believes may be damaging to its own trademark rights. Petitions for cancellation of a trademark registration are heard before the U.S. Trademark Trial and Appeal Board, the adjudicative body of the United States Patent and Trademark Office.
What are the steps in a Petition for Cancellation proceeding? The procedural rules of U.S. trademark cancellation proceedings may be found in the Trademark Trial and Appeal Board Manual of Procedure. Deadlines and procedures before the Board are specific, and must be followed at all times. Therefore, strict adherence to the rules is encouraged of all parties appearing before the Board.
What are the Grounds for a Cancellation? Petitions for cancellation of a trademark registration are governed by 15 U.S.C. Section 1064. There are several legal grounds that exist to cancel a trademark registration, including priority, abandonment (by non-use of at least three consectuive years together with an intent not to resume use), and fraud. There are additional grounds as well, such as priority of use and genericness.
When can a trademark cancellation action be filed? The time in which a cancellation action must be filed depends on the grounds for cancellation. A cancellation petition may be filed at any time (1) within five years of the trademark registration date, (2) at any time if the trademark becomes abandoned, or (3) at any time if fraud is alleged in the procurement of the trademark registration, or (4) if any time the registered mark becomes merely descriptive or generic of the goods or services for which it is registered.
Parties should note that trademark cancellation proceedings are adversarial proceedings, and, like any other civil proceeding, require specialized knowledge of the law and procedures. Therefore, it is always best to consult with a trademark cancellation attorney.