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The United States Patent and Trademark Office (USPTO) provides administrative procedures for contesting the validity of a trademark registration through a procedure known as cancellation proceeding via a “Petition to Cancel” an already registered mark. This procedure is useful to eliminate an interfering trademark registration or to weaken an opponent’s threatening litigation. It is also useful to cancel a mark that perhaps should not have been obtained and is now being cited against your pending application. The cancellation proceeding is essentially a micro-lawsuit within the USPTO and in front of the Trademark Trial and Appeal Board (TTAB).

It is initiated by filing a petition where the petitioner lays out the causes of action followed by a 90-day period for the parties to conduct discovery; i.e., exchange evidence. This period is then followed by a trial period in which each party is granted 30 days to take testimonial depositions followed by 15 days to take rebuttal depositions. Finally, the parties submit written briefs on the facts and law, and the TTAB issues a ruling on whether the registered mark should be cancelled.

The grounds upon which cancellation can be obtained depend on certain factors, for example, the period of time the registration has been in force. For registrations less than five years old, cancellation can be had on any multiple grounds which renders the term unsuitable to be a trademark. Some examples may include: merely descriptive, generic, confusingly similar to another mark, likelihood of confusion, lack of ownership, abandonment, and fraud on the PTO. For registrations more than five years old, there are less options but some exemplary grounds upon which cancellation may be had are: genericness, abandonment, and fraud on the PTO.

The cancellation proceeding may be a cost effective procedure for a cost conscious client for challenging a competitor’s trademark registration. Should you think this procedure may be a useful approach for you, please contact one of the attorneys at Brooks Acordia IP Law, P.C.