Trademark Cancellation Proceedings

There are two ways to oppose the registration of a trademark: opposition proceedings and cancellation proceedings. If the mark is still undergoing prosecution (it has not been issued or denied yet), then there is a 30-day window after the publication of the mark to file a notice of opposition. This article will look at the other common situation – when the mark has already registered, and it is necessary to undergo cancellation proceedings.

Someone who is seeking to use a mark that is currently registered by someone else or who believes that it is being (or will be) damaged by a registered mark may initiate a cancellation proceeding. This is done by filing a petition to cancel with the “TTAB” (Trademark Trial and Appeal Board). The cancellation proceeding is between the trademark owner (“Registrant”) and the challenging party. After the Board receives the petition, it notifies the Registrant that a cancellation proceeding has been initiated and sets a schedule for the Registrant to respond to the complaint (usually giving 40 days for the Registrant to file a written response to the allegations).

The proceedings run much like an in-court lawsuit. The entire process of a cancellation proceeding can take anywhere from one to several years. The parties exchange evidence regarding their respective trademarks and other issues relevant to the cancellation proceeding. They also file briefs with the TTAB. The TTAB reviews these briefs and make a decision as to whether the trademark should be canceled. Besides proving that the challenging party is likely to be damaged by the mark, it must also prove that there are valid grounds that the mark is not entitled under law to be registered (such as likelihood of confusion or non-use). If it is cancelled, the trademark is removed from the federal registry and the owner no longer possesses the rights to exclude others from using the mark. (Note that the proceedings act on the federal level; there may still be state rights in the mark.)

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  1. As a lowly law student and fomrer clerk for a federal judge, I have been privy to many settlement conferences and requests for extensions. (One very real possibility is the judge is pushing for settlement, that happens a lot.) This type of delay is par for the course. You can expect the whole debacle to be resolved approximately 3 years after you forget there was an argument. The only time things don’t take inordinately long is when its a criminal matter- and that only goes quickly because the constitution makes them.

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