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What You Need to Know about Getting Someone’s Trademark Canceled

hand on notebookIs it possible to cancel a U.S. trademark registration owned by someone else?

Yes. But there are rules and procedures that guide the process. Namely, you have to file a petition to cancel.

Petitions to Cancel are filed with the U.S. Trademark Trial and Appeal Board (TTAB), an administrative body responsible for hearing and deciding different types of trademark disputes.

Why would anyone want to cancel a trademark registration owned by another entity or individual?

Why You Might Want to Cancel Someone Else’s Trademark Registration

Trademark applications will often be refused if they are likely to be confused with trademarks that have already been registered. Sometimes, those already existing trademarks are vulnerable to cancellation.

If an applicant can get the already-existing trademark that is blocking theirs cancelled, it can clear the path for them to secure a registration. This is where the Petition to Cancel comes in.

What Makes an Existing Trademark Vulnerable to Cancellation?

A Petition to Cancel filed within the first five years of registration can be based on the following claims:

  • Abandonment of the trademark (non-use in commerce); causing it to lose all capacity as a source indicator for the registrant’s goods or services
  • Likelihood of confusion with another trademark
  • Fraud in obtaining the trademark registration
  • Priority of Use in Commerce – the Petitioner’s trademark was used in commerce first
  • The trademark is generic, merely descriptive, geographically descriptive, or deceptively misdescriptive under the Lanham Act
  • The trademark is deceptive or falsely suggests a connection with a person, institution, belief, or national symbol
  • The trademark is merely a surname
  • The mark does not function as a trademark (i.e. it is merely ornamental or decorative)
  • Dilution of a famous mark

Circumstances That Make a Trademark More Difficult to Cancel

A Petition to Cancel is best filed within the first five years of a registration being issued.

Why?

Because a trademark that has been registered for less than five years has not reached the stage of maturity where it is considered incontestable. Once a trademark registration has been determined Incontestable between the fifth and sixth years of registration, it becomes much more difficult to challenge the registration.

“More difficult” does not mean “impossible,” however. Some examples of reasons to challenge a trademark registration after it has been declared incontestable are:

  • The registered mark has become a generic name for the goods or services
  • The registered mark has been abandoned
  • The registration was obtained fraudulently
  • The registered mark is functional

Things become even more difficult if a trademark has reached 10 years of registration. The only claims that may succeed after this point are:

  • The registered mark has been abandoned and is no longer used as a source indicator of goods and services
  • There has been fraud in maintaining the registration (i.e. submitting fraudulent information in the Combined Declaration of Use and/or Excusable Nonuse/Application for Renewal)

How Petition to Cancel Cases Work

There is a presumption of validity that attaches to a trademark registration. So the party seeking to cancel the respondent’s trademark registration must rebut the presumption of validity by a preponderance of the evidence. If the Petitioner establishes a prima facie showing of invalidity, the burden then shifts to the registrant, who must produce evidence or argument in defense of the registration.

Bottom line? The older and more established a trademark registration, the harder it is to succeed in trying to cancel the registration.

Additionally, based on my experience, it is much easier to prove abandonment and nonuse of a trademark than fraud in obtaining or maintaining a trademark registration. Before trying to handle a Petition to Cancel, make sure you seek the advice of an IP attorney who has successfully filed a Petition to Cancel with the TTAB in the past.

 

Article provided by Crystal Broughan, Intellectual Property Attorney with MarksGray