A Guide to U.S. Trademark Cancellation Proceedings with the Trademark Trial and Appeal Board (TTAB)

Trademark rights in the United States are not absolute. In fact, a registered trademark may be attacked through what is called a cancellation proceeding. A cancellation proceeding is a type of inter partes proceeding, conducted with a division of the United States Patent and Trademark Office, called the Trademark Trial and Appeal Board (TTAB). The TTAB also hears other inter partes proceedings such as oppositions, concurrent use and interference proceedings as well as ex parte appeals of office action rejections. The cancellation proceeding is the avenue for parties to contest the validity of a registered trademark. A cancellation proceeding is sometimes done in lieu or prior to a trademark litigation lawsuit. We explain here how the U.S. trademark cancellation process works: grounds for cancellation, steps involved, and several key considerations both for trademark owners and challengers.

Key Considerations for Cancellation of Trademarks

Trademark cancellation is a legal process whereby a registered trademark is invalidated. The reasons it can be canceled range from non-use and abandonment to the mark being descriptive or generic in nature, among others. The proceeding normally starts with the filing of a petition before the TTAB, the administrative body of the United States Patent and Trademark Office, which is entrusted with handling disputes relating to registration matters of trademarks.

Grounds for Cancellation of a Trademark

There are various grounds under which a registered trademark may be challenged or cancelled, including:

1. Non-use or Abandonment

If a trademark holder does not use its mark in commerce for an extended period of time, typically three years, it might be considered abandoned, thereby being eligible for cancellation.

2. Descriptiveness or Genericness

A trademark that is merely descriptive of the goods or services it represents. In some other cases trademarks can become generic over time because the mark becomes synonymous with particular goods or services. This is known as genericized or genericide¹. Some examples are escalator, linoleum, zipper.

3. Likelihood of Confusion

In case a registered trademark is likely to cause confusion with an existing mark, then such a mark can be cancelled.

4. Fraud

The registration may also be canceled on the ground that the trademark owner committed fraud during the application process, for example, submitting false statements regarding the use of the mark.

5. Dilution

A trademark can be canceled if its use is diluting the distinctiveness or tarnishing the reputation of a famous mark.

How Cancellation of Trademark Works

1. Filing the Petition

The process of cancellation starts by filing the petition to cancel with the TTAB. The petitioner must notify grounds for cancellation and pay the appropriate filing fee.

2. Answer and Discovery

A deadline is provided upon which the trademark owner, the registrant, has to file an answer to the petition. Upon the filing of such answer, a discovery phase then commences wherein the two parties gather evidence to support their respective positions. This phase may include written interrogatories, document requests and depositions.

3. Trial Phase

The trial phase of a cancellation proceeding is conducted completely in writing. The parties exchange briefs and supporting evidence and argument. However, oral hearings can optionally be requested either in-person or via video conference.

4. Decision by the TTAB

Upon due consideration of the briefs and evidence, the TTAB will enter a decision. If the Board grants the petition, the registration may be cancelled. If the respondent wins, the registration stands.

5. Appeal

Any of the parties may appeal the decision of the TTAB to the U.S. Court of Appeals for the Federal Circuit or, in the alternative, file a civil action in a federal district court.

Key Issues in Trademark Cancellation

• Timing: With a few exceptions, such as laches, petitions for cancellation may be filed at any time. However, timing may bear on the chances of success in cases where the basis of a petition is non-use or abandonment.
• Evidence: Evidence of great weight is required to be adduced in cancellation proceedings; therefore, in cases where fraud or non-use is to be alleged, appropriate documentation and adequate records of use of the mark are decisive.
• Legal Representation: Specialized knowledge of trademark law and procedures before TTAB are compulsorily required to sail through the proceedings. It is therefore highly advisable that legal representation be done by a reputed experienced trademark attorney.

Cancellation proceedings before the TTAB are one of the most important ways to help maintain a strong, enforceable trademark portfolio. To effectively navigate through the process—whether attempting to cancel a registration or defending your own mark—requires a clear understanding of the process and possible results. A trademark attorney will do so by providing strategic advice necessary to help guide in this complex area of law.