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 registration is 5 years old. However, there are some cases where registrations can be cancelled even after five years.
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 that 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. Someone can file a cancellation for one or more of these reasons, or for one of 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 notice of default is issued. And if no response is given after a notice of default, then a default judgment may be entered. This means that the party that filed the cancellation essentially “wins.” At that point, the registration would be canceled without further proceedings.
If the cancellation moves forward and the parties do not settle, eventually the TTAB will make 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. In fact, foreign-domiciled parties now must be represented by a U.S. attorney. 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.
Has a Petition for Cancellation Been 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 (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
