How to File to Cancel a Trademark Application: A Step-by-Step Guide

Have you ever wondered how to cancel a problematic trademark application? Filing to cancel a trademark registration is an important maneuver that could potentially protect your business and your intellectual property rights. You could be in a situation where you are facing a trademark that conflicts with your business name, or you could be concerned about a trademark that was filed in bad faith. Or you could be in an adjusted situation where you do not believe a trademark should be registered. Whatever the case it is important to understand how the trademark cancellation process works so that you can successfully implement this option if it is needed.

At Select IP Law Corporation we have managed many trademark opposition and cancellation proceedings. Please do not hesitate to reach out if you would like to schedule a consultation.

Here is a step-by-step process on how to cancel a trademark registration at the USPTO.

1. Understand the grounds you plan to bring a trademark cancellation proceeding

Before the filing of a trademark cancellation proceeding, you should have a good understanding of the grounds that you want to bring the cancellation proceeding under. To have a strong case it should fall under one of the following grounds or another viable reason as determined by the Trademark Office:

• Likelihood of Confusion: The trademark in question is too similar to your existing registered trademark, leading to consumer confusion.
• Non-Use: The trademark owner has not used the mark in commerce for a continuous period (usually three years).
• Fraud: The trademark was obtained through fraudulent means.
• Genericness: The trademark has become generic and is no longer associated with a particular source.

2. Prepare a petition for cancellation and file it with the TTAB

Once you have a clear understanding of the grounds on which you want to bring a cancellation proceeding, you should  file a petition for cancellation with the TTAB. This document functions like a complaint does in a civil action and it outlines the grounds for seeking cancellation. The petition should clearly state the name of the party seeking cancellation as well as the trademark owner. The petition should also include details of the trademark that are relevant including the trademark registration number, the market itself, and the goods and services associated with the mark. The petition for cancellation should also include a clear and concise explanation of why the trademark should be cancelled. This document is typically no more than a few pages, so you do not need to cite every single legal case in this issue.

Once the petition has been prepared you can file it electronically through the TTAB online filing system. Along with the petition of filing fee will be required. You need to ensure that you pay the correct fees and submit the necessary documents. After filing, the trademark owner will have a set period to respond. Typically, this period can be extended by mutual consent of the parties.

3. Conduct discovery and engage in potential settlement discussions

Once the trademark owner has responded to the petition then the preceding enters the discovery phase. During this phase, the parties engage in discovery similar to a similar action. This can involve submitting interrogatories, requests for admission, depositions, as well as engaging in potential settlement discussions. It may be that the parties decide to settle with an agreement to coexist, and many cases are settled at this stage. The discovery stage can be complex so it many times beneficial to work with a trademark attorney who can help navigate the process.

4. Trial Phase

After the discovery phase, the TTAB may hold a hearing where both parties can present their cases before a panel of judges. Alternatively, the parties may reach a settlement agreement at any point during the process.

If the case proceeds to a hearing, the TTAB will review the evidence and issue a decision. If the decision is in your favor, the trademark will be canceled. Even after a successful cancellation, it is important to monitor the trademark and related filings. Trademark owners may attempt to re-file or modify their applications, so staying vigilant is key to protecting your brand.

5. Concluding Thoughts

Filing to cancel a trademark application is a detailed and legally complex process. While it is possible to navigate the process on your own, consulting with a trademark attorney can provide valuable guidance and improve your chances of success. By understanding the steps involved and preparing thoroughly, you can effectively challenge trademarks that threaten your brand and business.

For personalized assistance with your trademark cancellation or any other intellectual property concerns, feel free to contact us. We are here to help you protect what matters most.