A petition to cancel a trademark for abandonment is becoming more common.  This is due, in part, to the USPTO’s recent focus on clearing the registry of “deadwood” trademarks.

Trademark registrations that are subject to cancellation have one of two characteristics:

• all of the goods or services have been abandoned;
• some of the goods or services have been abandoned

Where all of the goods or services have been abandoned, the claim for relief is a total cancellation.  In instances where some of the goods or services are no longer in use, the claim if for partial cancellation.   A partial trademark cancellation can be for single-goods within a specific class.  It can also be brought against an entire class of goods.

Proof.   To establish a claim for trademark abandonment, the Petitioner must show that the registrant has discontinued use of the mark in connection with the associated goods or services.  The time period to establish a prima facie case is at least three-consecutive years of non-use.   If the petitioner is successful, the burden then shifts to the trademark registrant to show that it was had use of the mark during the time period.  In the alternative, the registrant could establish that it intended to resume use through justifiable non-use.

Standing.  A petitioner is also required to establish standing.  To do so, the petitioner must show that it has a legitimate interest in the outcome of the proceeding.  This means that it is not a mere intermeddler and has some sort of commercial interest to use the mark.

Why file?  Petitions to cancel based on abandonment may be filed at any time.  Often, a petition to cancel due to abandonment is filed because the attacked registration was cited as a basis to refuse a third-party’s later-filed application.  In such a case, the Applicant may file a petition to cancel to overcome the refusal to register.  If successful, the cited registration will be removed as a bar to the later-filed application.  A petition to cancel a trademark registration may also be brought by an Applicant as a counterclaim in a trademark opposition proceeding.  This strategy may be helpful where the opposer relies on several of its own registrations as grounds to oppose a third-party application.   When this occurs, the Applicant may seek discovery on whether the Opposer has indeed been using its pleaded marks on all of the goods set forth in the Opposers’ registrations.  If it appears that the Opposer has not been using its own marks on some of the goods cited in its pleaded registrations, a petition for partial cancellation may be proper.

If a petition for trademark cancellation has been filed against your company, it is important to determine your options.