Unlike opposition proceedings that block applications, trademark cancellation removes marks that are already registered. Cancellation proceedings challenge whether a registration should continue in force. Understanding cancellation helps you clear the path for your own registration or eliminate problematic competing marks.
What Is Trademark Cancellation?
A cancellation proceeding at the Trademark Trial and Appeal Board (TTAB) seeks to remove an existing trademark registration from the federal register. If successful, the registration is cancelled as if it never existed—though the former owner may retain common law rights.
Cancellation is more involved than opposition because you're attacking established rights, not just potential registration.
Who Can Petition for Cancellation?
Anyone who believes they're damaged by a registration can petition for cancellation. You must demonstrate standing—typically by showing a real commercial interest affected by the registration. Owners of conflicting marks, parties blocked from registration, and others with legitimate commercial concerns can petition.
Timing Matters
Some grounds for cancellation are available anytime; others have time limits. Within five years of registration, any ground for refusal that could have blocked the original registration is available. After five years, only limited grounds remain.
After five years, available grounds include that the mark has become generic, the mark was abandoned, the registration was obtained fraudulently, the mark violates certain statutory bars, and the mark is causing likelihood of confusion with a "famous" mark (for dilution).
Common Cancellation Grounds
Likelihood of confusion with your prior mark is the most common ground—the registered mark is too similar to your earlier mark and creates consumer confusion. This requires showing your mark has priority (was used first) and that confusion is likely.
Abandonment applies when the registrant stopped using the mark with no intent to resume. Non-use for three consecutive years creates a presumption of abandonment. Abandoned marks should not maintain registration.
Genericness cancels marks that have become the common name for a product category. Once consumers see a brand name as generic (like "aspirin" or "thermos"), it no longer functions as a trademark.
Fraud on the USPTO occurs when the applicant knowingly made false statements during registration—like claiming use when none occurred or denying knowledge of conflicting marks.
The Cancellation Proceeding
Cancellation proceedings follow similar procedures to oppositions—discovery, testimony periods, and briefing. The proceeding occurs before the TTAB, not in federal court. Written evidence and briefs determine the outcome.
Proceedings typically take 18-36 months from filing through decision, though settlements often resolve cases earlier.
Proving Abandonment
To cancel for abandonment, investigate whether the registrant is actually using the mark. Search for products bearing the mark, review the registrant's website, check marketplace presence. If you find no current use, document the absence.
Three years of non-use creates a presumption the mark is abandoned. The registrant must then prove intent to resume use—which can be difficult without evidence of ongoing plans.
Proving Genericness
Genericness cancellation requires evidence that the primary significance of the term to the relevant public is the product category, not the brand. Survey evidence, dictionary definitions, media usage, and competitor practices can demonstrate genericness.
Generic cancellation is challenging because registrations enjoy a presumption of validity.
Settlement Options
Most cancellation proceedings settle. Common resolutions include the registrant voluntarily cancelling or surrendering the registration, coexistence agreements defining how both marks can exist, and consent arrangements with limitations on use.
Evaluate settlement possibilities before investing heavily in contested proceedings.
Strategic Considerations
Cancellation is expensive—potentially $50,000 to $200,000+ through TTAB decision. Consider whether the registration actually blocks your activities or is just annoying. Sometimes designing around or coexisting is more cost-effective than cancellation.
However, problematic registrations can become stronger over time. Acting earlier—when the registration is younger or evidence of abandonment is fresher—is often advantageous.
Alternative: Section 8 Challenges
Registrations require periodic maintenance filings. If the registrant misses deadlines or makes false statements in maintenance filings, administrative cancellation may occur without a full proceeding.
Getting Legal Help
Cancellation proceedings require trademark litigation experience. TTAB procedures are specialized, evidence development is crucial, and strategic decisions significantly affect outcomes. Experienced trademark counsel improves your chances of success.