Trademark Cancellation Proceedings: Is Your Registration at Risk?

A petition to cancel may be filed at any time, but the available grounds change after five years. Before five years, a petitioner can challenge on virtually any ground, including likelihood of confusion, mere descriptiveness, non-use, fraud on the USPTO, functionality, and genericism. After five years the registration becomes eligible for incontestable status, which limits available grounds but preserves challenges based on genericism, fraud, functionality, and abandonment.

Trademark registration and intellectual property counsel can advise on the grounds applicable to the specific registration and develop the cancellation or defense strategy.

Trademarks and brand protection and trademark law counsel can advise on which grounds apply to the specific registration, assess the strength of each, and develop the cancellation or defense strategy.

Genericism occurs when a trademark becomes the common name for the class of goods or services it identifies, and a generic mark can no longer function as a trademark because it describes the category rather than the source. Genericide has claimed marks including aspirin, escalator, and thermos, and an owner who fails to police generic use and enforce against competitors who use the mark generically risks losing all trademark rights.

Trademark litigation and counseling and unfair competition law counsel can advise on whether a mark has become generic, assess the strength of a genericism-based claim, and develop the attack or defense strategy.

To begin a TTAB cancellation proceeding, the petitioner files a petition identifying the mark, the registration number, the petitioner's standing, the grounds, and supporting facts. The TTAB serves the petition on the registrant, who has forty days to answer, and if the registrant fails to answer the TTAB may enter default judgment, after which the proceeding moves through discovery, testimony periods, and briefing.

Trademark registration and trademark litigation and counseling counsel can advise on TTAB cancellation petition requirements, assess standing, and develop the filing strategy.

Proceedings, but they differ in timing: an opposition is filed during the thirty-day window after the USPTO publishes a pending application, challenging the mark before registration, while a cancellation is filed after registration and seeks to remove an existing registration from the Principal Register. Cancellation is the only remedy once a registration has issued.

Trademarks and intellectual property registration counsel can advise on the differences between cancellation and opposition and develop the inter partes proceeding strategy.

A trademark owner can claim incontestable status by filing a Section 15 declaration after the mark has been in continuous use and registered for five years, with no adverse decisions pending, the mark not having become generic, and the mark still in active commercial use. Once achieved, incontestable status is a conclusive presumption of validity, ownership, and exclusive right to use, providing both an offensive weapon in infringement litigation and a shield against many cancellation grounds.

Trademark litigation and counseling and brand protection and trademark law counsel can advise on the incontestable status defense, assess whether the registration qualifies and whether the petitioner can overcome it, and develop the defense or challenge strategy.

Although incontestable status forecloses most descriptiveness-based attacks, a petitioner can still challenge an incontestable registration on grounds of fraud, abandonment, functionality, genericism, use of the mark to misrepresent the source of goods, or any other ground specifically preserved by statute. A petitioner must evaluate which surviving grounds apply and focus its evidentiary record on those grounds.

Trademarks and trademark infringement counsel can advise on grounds available to challenge an incontestable registration and develop the cancellation strategy.

A registrant who receives a TTAB cancellation petition must file an answer within forty days admitting or denying each allegation, raising affirmative defenses such as laches, acquiescence, or estoppel, and optionally filing counterclaims to cancel any vulnerable registration owned by the petitioner. The most common defense in a non-use-based cancellation is excusable non-use, where the registrant shows the non-use was due to special circumstances rather than intent to abandon.

Trademark litigation and counseling and civil litigation evidence counsel can advise on defenses available to a registrant facing a cancellation petition and develop the answer, affirmative defenses, and counterclaim strategy.

A petitioner seeking to remove an abandoned trademark must demonstrate that the registrant discontinued use with intent not to resume, and the Lanham Act creates a rebuttable presumption of abandonment after three consecutive years of non-use. To establish abandonment, the petitioner introduces marketplace evidence showing the absence of the mark in the registrant's channels of trade and uses discovery to obtain sales data and advertising expenditures.

Brand trademark registration and intellectual property registration counsel can advise on removing an abandoned or blocking trademark from the register and develop the petition and clearance strategy.