Petitions To Cancel
The Trademark Act provides parties with the ability to file something called a “petition to cancel.” Thomas P. Howard, LLC provides Petition to Cancel attorneys that are experienced in litigating such claims before the Trademark Trial and Appeal Board. When filing a petition to cancel, a party is arguing for the cancellation of an existing trademark registration. Until a registration actually issues, there is no registration to attempt to have canceled. Therefore, any petition to cancel that is attempted prior to registration issuing will be rejected by the TTAB and the filing fee refunded.
Petitions to cancel are litigated utilizing the same tools as that of an trademark opposition, and involve the filing of the petition to cancel followed by full discovery, summary judgment motions, final written briefs and, if requested, final arguments before the TTAB. As with oppositions, the matter must be litigated pursuant to the TTAB’s administrative rules and the deadlines set forth by the TTAB.
Any person who believes that they have been damaged by the registration of the mark has standing to file a petition to cancel. At the initial pleading stage, in order to file a petition to cancel the plaintiff must allege sufficient facts to show a real interest in the proceeding and a reasonable basis for a belief in damage. To plead a real interest, the plaintiff must allege a direct and personal stake in the outcome of the proceeding. The allegations in support of plaintiff’s belief in damage must have a reasonable basis in fact.
A party must demonstrate grounds for its petition to cancel. Some of the potential grounds include, but are not limited to:
- likelihood of confusion with another mark;
- the mark is merely descriptive or is generic;
- the mark is geographically deceptive, disparages members of a particular group, or falsely suggests a connection with Petitioner’s name or identity;
- no bona fide use of the mark occurred in commerce pursuant to Section 1(a) of the Trademark Act;
- defendant is not the rightful owner of the mark;
- the defendant’s mark has been abandoned;
- the defendant’s mark consists of or comprises the name of a particular living individual without that person’s consent;
- the term for which registration was obtained was not used as a trademark or service mark;
- defendant’s mark would dilute the distinctive quality of petitioner’s famous mark.
A petition to cancel must be filed within five years from the date of the registration of the mark if the plaintiff wishes to show either likelihood of confusion or descriptiveness as a basis for cancellation of the mark.
A petitioner must plead, and later prove, priority of use. In order to properly assert priority a petitioner must allege facts showing proprietary rights in the disputed mark that are prior to defendant’s rights.
As with trademark oppositions, petitions to cancel frequently settle. In some instances extended administrative litigation can occur. The petition to cancel attorneys at Thomas P. Howard, LLC have handled petition to cancel proceedings on behalf of Thomas P. Howard’s clients and our attorneys are very familiar with the law relevant to these matters. For a free consult regarding petition to cancel issues, simply e-mail us, or call (303) 665-9845.