In an earlier post, I discussed how a trademark opposition can be filed against pending applications. The opposition is a challenge to that application. But what if a trademark has already been registered? A challenge to an existing registration is called a trademark cancellation. When someone wants to cancel an existing registration, they must file a petition for cancellation with the Trademark Trial and Appeal Board (TTAB). In most cases, they must do so before the contested mark has been registered for five years. There are cases where registrations can be cancelled even after five years, though.
Why would someone want to cancel an existing registration? Usually, it is because they believe a registered mark is confusingly similar to their own. Or, they may try to cancel a mark to make it easier to register their own trademark. There are several arguments that are commonly used to try and cancel a trademark registration. One might argue they have prior rights to a registered mark. Or they might file a trademark cancellation against a registration they believe is no longer in use. A cancellation can be filed arguing that a mark is descriptive, and was not entitled to registration in the first place. It can be advantageous for someone to file a trademark cancellation based on one of these, or many other reasons.
After the petition for cancellation is filed, the TTAB will begin the proceeding. They will contact the parties and give them a schedule that the cancellation will follow. Like the opposition proceeding, the schedule lists dates and deadlines for the trademark cancellation. These can be changed by mutual agreement of the parties, once approved by the TTAB. The registration owner has 40 days to respond to the cancellation after the schedule is issued. If they do not respond, a default judgment is entered. This means that the party that filed the cancellation essentially “wins.” At that point, the registration would be canceled without further proceedings. At the conclusion of this process, assuming there is no settlement between parties, the TTAB would give a ruling. Based on that, the registration will either remain in effect, or be cancelled. In a cancellation proceeding, the registration is the only thing at stake. No monetary damages will be awarded. No attorneys’ fees are awarded.
The trademark cancellation proceedings are like a mini-lawsuit. It is not advisable for someone without trademark litigation experience, or even basic legal experience, to try and represent themselves in such a proceeding. Moreover, if a trademark cancellation is filed against you then you need to quickly file a strong response. Failure to do so could result in a default judgment where you lose your registration. A trademark attorney can give you guidance and help you navigate through the proceeding. They can advise you whether settlement is a better option, and help with that process.
Have You Received Notice That a Trademark Cancellation Was Filed Against Your Registration? Do You Need To File a Trademark Cancellation?
If someone has filed a trademark cancellation against your registration, or if you think you need to file a cancellation, please consider speaking with a trademark attorney. This can be a difficult and lengthy process, and not something where you want to “do-it-yourself.” If you are interested in speaking with a trademark attorney that can assist you with a trademark cancellation, please feel free to call me at (314) 479-3668, email me at firstname.lastname@example.org, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.