Trademark Cancellation

Welcome to our page giving you information about a Trademark Cancellation when we file a Petition to Cancel with the Trademark Trial and Appeal Board also known as “TTAB”

For a TTAB case in which the trademark has not yet been registered, that procedure is called a Trademark Opposition.    Are you an artist, performer or musician or a business that needs to file or defend against  a Notice of Opposition or Petition to Cancel then you need a trademark cancellation lawyer, please contact us.

Trademark Cancellation vs. Opposition: Know the Difference

Distinguishing between trademark cancellation and opposition is essential. Opposition occurs within the 30-day period following the approval of a trademark application’s publication in the Official Gazette. It aims to prevent the registration of a trademark. In contrast, trademark cancellation is the process of invalidating an already registered trademark.

A Trademark Cancellation is filed with the Trademark Trial and Appeal Board after a trademark registers with the U.S. Patent and Trademark Office.  There are a variety of acceptable reasons for trademark cancellation. If you want to request cancellation or are facing a cancellation request, the below covers some of the specifics of the process.

Common Grounds for Trademark Cancellation

Trademark cancellation proceedings must overcome specific challenges. The petitioner, in the first place, must establish standing, demonstrating direct harm resulting from the registered trademark. Once standing is established, several legal grounds exist for trademark cancellation:

• Abandonment: If the trademark owner has abandoned the mark.
• Likelihood of Confusion: When a registered trademark causes confusion with another.
• Non-Use: If the trademark hasn’t been used as claimed in the application.
• Lack of Intent to Use: When there was no genuine intent to use the trademark in commerce.
• Fraud: Occurs during the trademark registration process.
• Dilution: For famous trademarks facing dilution.
• Deceptiveness, Scandalous, or Immoral: If the trademark is offensive or misleading.
• Genericization: When a trademark becomes a common term (e.g., “dry ice” and “escalator”).
• Surnames or Merely Descriptive: When the mark is a surname or overly descriptive.

Cancellation for these reasons is typically limited to the first five years after registration.

The Trademark Cancellation Procedure: A Step-by-Step Overview

The trademark cancellation process is a legal journey, with contested cases potentially extending to a year. Most cases, however, result in one party conceding early. The procedure unfolds in several phases:

1. Filing of the Petition to Cancel: The process commences with the filing of a petition via the Electronic System for Trademark Trials and Appeals (ESTTA). The USPTO assigns a processing number and schedules proceedings.

2. Discovery Phase: This phase mirrors federal court proceedings, allowing both sides to gather evidence and build their case. It includes document requests, interrogatories, depositions, and more.

3. Presentation of Evidence and Trial Briefs: While similar to court proceedings, trademark cancellations rarely involve in-person hearings. All relevant materials are submitted directly to the TTAB. A decision usually issues within approximately six months.

Outcomes of Trademark Cancellation

Unlike federal court cases, trademark cancellation proceedings do not result in damage awards or attorney’s fees. The TTAB decides whether to cancel a trademark or determine the rightful owner if there’s a dispute.

Adhering to the Timeline: The Key to Success

The USPTO enforces strict guidelines for trademark cancellation proceedings. Meeting these deadlines is crucial to protect your rights. Failure to respond to a petition can lead to the loss of your registered trademark.

Responding to a Trademark Cancellation: Defending Your Brand

If someone files a trademark cancellation against your mark, you will receive a notice of the proceeding via email. Pay close attention to the deadlines, as failing to respond may lead to the abandonment of your trademark. Responding requires building a defense based on the claims made by the plaintiff.

Avoiding Trademark Cancellation: Safeguarding Your Brand

To minimize the risk of trademark cancellation, consider these steps:

• Choose the Right Trademark: Conduct a trademark search to ensure it’s not likely to confuse consumers or is merely descriptive.

• File Renewals and Declarations of Use: Follow the renewal requirements to prevent cancellation.

• Maintain Control: Implement written license agreements when multiple entities use the trademark.

• Be Specific with Use: Specify which products or services the trademark covers during registration.

• Keep the Trademark in Use: Consistent use is vital to avoid claims of abandonment.

• Fight Against Genericization: Prevent your trademark from becoming a generic term.

In conclusion, understanding trademark cancellation proceedings is essential for protecting your brand’s intellectual property rights. Whether you’re pursuing cancellation or defending against it, navigating this legal process can safeguard the identity of your business in the competitive marketplace, with the help of a skilled trademark cancellation lawyer.

OUR RECENT VICTORY IN TRADEMARK CANCELLATION PETITION

PAGLIARA LAW GROUP, P.A. and Attorney Nicholas Pagliara scored a win for the client in Jessenia Gallegos v. Jessenia Mills in a TTAB cancellation proceeding.  We represented the Petitioner who both parties used the name “Jessenia” as the artist name as musician/singer/performer.  We filed a Petition to cancel the other Jessenia’s trademark that she filed first.  We persuaded the TTAB 3 judges that our client had prior common law rights that trumped the trademark registration and we were successful in cancelling her trademark for her first name “Jessenia” . Our client was overwhelmed with happiness she had the right to use her first name again as her trade as a singer.  It is important you file a trademark to save time and money that could have prevented this.    See  TTAB Cancellation proceeding case here:   Jessenia Gallegos v Jessenia Mills