Trademark Cancellation

Cancellation of Federal Trademark Registrations

The Trademark Trial and Appeal Board (TTAB) and Federal Courts both hold significant power when it comes to the cancellation of federal trademark registrations issued by the United States Patent and Trademark Office (USPTO). These two bodies are critical entities in the governance and maintenance of the US trademark system, ensuring that every registered mark is valid, non-infringing, and worthy of protection.

The TTAB, an administrative board that is part of the USPTO, primarily handles disputes regarding trademark registrations, such as oppositions to pending applications and cancellations of registered trademarks. In cancellation proceedings, the TTAB assesses whether the registration should be revoked based on various grounds set forth in the Lanham Act, which could include the trademark being abandoned, misleading, generic, or otherwise unqualified for protection.

Similarly, Federal Courts also have the authority to cancel federal trademark registrations. These courts can adjudicate disputes involving trademark rights, and one of the remedies they can grant in a trademark infringement suit is the cancellation of the infringing mark’s federal registration. Their ability to cancel federal registrations can also be invoked in a declaratory judgment action where the validity of a trademark registration is directly in question.

For a petitioner to succeed in a cancellation proceeding, there are two primary burdens they must meet: the burden to plead and the burden to prove. The petitioner must first plead a valid ground for cancellation, articulating a clear and specific basis as to why the trademark registration should be cancelled. This could include arguments that the mark is generic, descriptive without acquired distinctiveness, falsely suggestive, or that it creates a likelihood of confusion with a mark that the petitioner has superior rights to.

Once a valid ground for cancellation is pleaded, the petitioner then has the burden to prove their case. This is typically done through the presentation of evidence and argumentation during the proceeding. This might involve providing proofs of prior use of a similar trademark, demonstrating consumer confusion, or showing that the trademark has become abandoned.

It’s worth noting that prevailing in a cancellation proceeding requires not only a strong legal argument but also compelling evidence. The TTAB and Federal Courts base their decisions on a careful review of the facts and the law, ensuring that any cancellation of a federal trademark registration is justified and in accordance with the principles of trademark law.

Petition for Cancellation of a Trademark Registration

A petition for cancellation of a trademark registration with the Trademark Trial and Appeal Board (TTAB) can be filed under several circumstances.

One common instance is after the USPTO has officially registered the trademark. Once this occurs, any party who believes they would be damaged by the registration of the trademark, such as a business owner who believes the trademark infringes upon their own, may file a cancellation petition within five years from the date of registration. This is generally termed as the five-year window for cancellation on many grounds.

However, it’s noteworthy that certain grounds for cancellation are not bound by this five-year limit and can be raised at any time. These include claims that the registered trademark has become generic, that it was obtained fraudulently, or that it’s abandoned. For example, if a registered mark is not used for a continuous period of three years, it can be deemed abandoned and vulnerable to cancellation.

Alternatively, a petition can be filed in the context of a concurrent use proceeding. If an applicant applies for a concurrent use registration and designates the conflicting trademark as an excepted use, the owner of the excepted trademark may file a petition to cancel the application on the ground of priority of use.

Furthermore, if a trademark application has been published for opposition and the opposition period has ended without an opposition being filed, a party may still file a cancellation petition against the trademark once it registers.

Lastly, it’s also possible to file a cancellation petition in response to a claim of infringement by the owner of the registered trademark. If a trademark owner initiates an infringement lawsuit, the alleged infringer can counterclaim in court or separately petition the TTAB for cancellation of the trademark.

Are Trademarks Registered On the Supplemental Register Subject to Cancellations?

A trademark that is seeking registration on the Supplemental Register, as opposed to the Principal Register, is not subject to opposition proceedings, but it may still be subject to cancellation. This reflects the unique purpose and function of the Supplemental Register within the United States trademark law system.

The Supplemental Register was created to accommodate trademarks that are not currently eligible for registration on the Principal Register, often because they are merely descriptive or have not yet acquired the secondary meaning necessary for such registration. As a way to encourage the use and recognition of these trademarks, the law allows them to be registered on the Supplemental Register, granting certain benefits, like the use of the registered trademark symbol (®), and providing a path to potentially achieving Principal Register status in the future.

Because these trademarks have not yet demonstrated distinctiveness, they are not considered fully-fledged trademarks in the eyes of the law, and as such, they do not have to undergo the opposition process typically associated with the Principal Register. This opposition process is meant to allow parties who might be damaged by the registration of a trademark on the Principal Register to challenge its registration, based on factors such as the potential for confusion with an existing mark.

However, the protection afforded to trademarks on the Supplemental Register is not absolute. Even though these trademarks are not subject to opposition proceedings, they can still be cancelled after registration. This could occur if a party believes that the trademark infringes on their existing rights, or if it’s determined that the trademark has become generic or deceptive. This cancellation provision acts as a safeguard, ensuring that the Supplemental Register does not become a shield for trademarks that should not be granted any form of protection.

In sum, while trademarks seeking registration on the Supplemental Register bypass the opposition stage, they can still be challenged and potentially cancelled post-registration, reflecting the distinct and limited rights conferred to trademarks on this Register.

Trademark Cancellation Due to Likelihood of Confusion

The cancellation of a trademark registration on the Principal Register that has been registered for less than five years commonly hinges on Section 2(d) of the Lanham Act. This provision concerns the likelihood of confusion between the mark in question and a prior mark. Likelihood of confusion is determined by several factors, most notably the thirteen factors established in the seminal case In re E. I. du Pont de Nemours & Co., often referred to as the DuPont factors.

The DuPont factors provide a comprehensive framework to guide the determination of likelihood of confusion. While they cover a broad range of considerations, not all factors are applicable or given equal weight in every case. Their relevance and importance vary depending on the specific facts at hand.

The first factor, and often seen as the most critical, is the similarity or dissimilarity of the trademarks in their entireties as to appearance, sound, connotation, and commercial impression. This factor assesses how similar the two trademarks are to each other and whether an ordinary consumer would be likely to confuse them.

The second factor is the similarity or dissimilarity and nature of the goods or services described in an application or registration or in connection with which a prior trademark is in use. It’s not necessary for the goods or services to be identical. Rather, they need to be related in some manner, or the conditions surrounding their marketing be such that they could be encountered by the same purchasers under circumstances that could give rise to a belief that the goods come from the same source.

Subsequent factors include the similarity of established trade channels, the conditions under which and buyers to whom sales are made, the fame of the prior mark, the number and nature of similar trademarks in use on similar goods, and the nature and extent of any actual confusion, among others.

The remaining DuPont factors delve into more specific circumstances, such as the concurrent use of trademarks without evidence of actual confusion, the right to exclude others from using marks, the extent of potential confusion, and any other established fact probative of the effect of use.

These thirteen factors act as a roadmap for determining the likelihood of confusion under Section 2(d), and thereby provide a basis for the cancellation of a trademark registration. However, the analysis is always fact-specific, and the weight and relevance of each factor will vary depending on the particulars of each case.

Trademark Cancellation Due To Non-Use Or Abandonment

Non-use or abandonment is indeed one of the most common grounds for cancelling a trademark before the TTAB of the USPTO. This claim is based on the premise that trademark rights are maintained through continuous and consistent use of the trademark in commerce. If a trademark is not used for an extended period, or if actions are taken that signify an intent to abandon the trademark, it can be vulnerable to cancellation.

Non-use or abandonment is typically characterized by two primary elements: non-use of the trademark in commerce and an intent not to resume its use. The Lanham Act specifically considers a trademark abandoned when its use has been discontinued with intent not to resume such use, and intent not to resume may be inferred from circumstances.

Non-use for three consecutive years constitutes prima facie evidence of abandonment, meaning that it creates a presumption of abandonment that the registrant must then rebut. However, this does not mean that non-use for a period of less than three years cannot constitute abandonment. If a petitioner can convincingly demonstrate that the registrant has no intention to resume use of the trademark, abandonment may be found even with less than three years of non-use.

As a petitioner, proving non-use or abandonment requires providing convincing evidence that demonstrates a clear period of non-use and an intent on the part of the registrant not to resume use of the trademark. This could include showing that the trademark owner stopped producing the product or service associated with the trademark, discontinued advertising or promotional activities related to the trademark, or took other actions that indicate a clear intention to abandon the trademark.

It’s important to note that abandonment is not always a straightforward issue. The registrant may counter the claim of abandonment by showing valid reasons for the non-use, such as temporary interruptions for business reasons or circumstances beyond the owner’s control. They could also demonstrate plans to resume use in the near future, which could serve as evidence against the claim of intent to abandon.

To prevail in a cancellation proceeding based on non-use or abandonment, the petitioner must persuasively demonstrate both elements of abandonment: non-use and intent not to resume use. Each case is unique and fact-specific, requiring a detailed examination of the evidence and circumstances surrounding the alleged abandonment.