Petitions to Cancel a Trademark
Grounds for cancellation, the process before the TTAB, costs, and when cancellation is the right strategy.
What Is a Cancellation Proceeding?
A cancellation proceeding is a legal action before the TTAB to remove an existing trademark registration from the federal register. Unlike an opposition (which challenges a pending application), a cancellation targets a registration that has already been granted.
Grounds for Cancellation
Within the first five years of registration, a mark can be cancelled on any ground that would have prevented registration in the first place — including likelihood of confusion, descriptiveness, genericness, or fraud. After five years (once a registration becomes "incontestable"), the grounds narrow significantly to genericness, abandonment, fraud, or certain other limited bases.
The Cancellation Process
The process mirrors an opposition: filing a petition, the registrant's answer, discovery, trial (based on written submissions and testimony depositions, not a courtroom trial), and briefing. Settlement is possible at any stage. The TTAB's decision can be appealed to the Federal Circuit or a federal district court.
When to Pursue Cancellation
Cancellation is the right strategy when you discover a registered mark that conflicts with yours and the registrant won't negotiate. It's also appropriate when a registered mark has become generic (like "escalator" or "thermos"), when the registrant has abandoned the mark, or when the registration was obtained through fraud.
Costs and Timeline
The USPTO filing fee is $600 per class (or $400 via ESTTA). Attorney fees and timelines are similar to opposition proceedings. The entire process typically takes 12-24 months, though settlements can occur much earlier.
Disclaimer: This article provides general information about trademark law and is not legal advice. Every situation is unique, and the information here may not apply to your specific circumstances. Consult a licensed attorney for advice tailored to your situation.
Schedule a consultation to discuss whether a cancellation proceeding is the right approach for your situation.
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What Is Likelihood of Confusion?
The DuPont factors explained: how the USPTO and courts determine whether two marks are too similar to coexist.
Trademark Opposition: What You Need to Know
When to file an opposition, what it costs, the timeline involved, and how to protect your brand before a conflicting mark registers.
What Is a Trademark Specimen?
Requirements for acceptable specimens, types of specimens for goods vs. services, and common reasons for refusal.