A Petition to Cancel is a legal proceeding initiated to challenge the validity of a registered trademark. Trademark Trial and Appeal Board (TTAB) at the United States Patent and Trademark Office (USPTO) manages this procedure.
What is a Petition to Cancel?
A Petition to Cancel is filed by a party who believes that a registered trademark is causing damage to their trademark rights. This petition can be filed against any trademark registered on the Principal or Supplemental Register.
Grounds for Cancellation
There are several grounds on which a trademark registration can be challenged, including:
- Likelihood of Confusion: The registered trademark is likely to cause confusion with a previously used or registered trademark.
- Descriptiveness: The trademark merely describes the goods or services it represents.
- Genericness: The trademark has become generic and no longer serves as a source identifier.
- Non-Use: The trademark has not been used in commerce for three years or more.
- Fraud: The trademark was obtained fraudulently by providing false information to the USPTO.
Filing a Petition to Cancel To file a Petition to Cancel, the petitioner must:
- Establish Standing: Demonstrate that they have a legitimate interest in the proceeding and are likely to be damaged by the continued registration of the trademark./li>
- File the Petition: Submit the petition through the Electronic System for Trademark Trials and Appeals (ESTTA) on the USPTO website. The petition must include a "short and plain statement" of the grounds for cancellation ().
- Pay the Fee: The USPTO requires a filing fee for each class of goods or services covered by the registration being challenged.
Benefits of Filing a Petition to Cancel
- Protect Your Trademark Rights: Prevents the continued registration of a trademark that infringes on your rights.
- Clarify Market Position: Helps maintain a clear and distinct market presence by removing potentially confusing trademarks.
- Legal Recourse: Provides a formal mechanism to address grievances related to trademark registrations.
- Canceling a Registration: If a registration is blocking your application, canceling it can clear the path for your application.
Responding to a Trademark Petition to Cancel
If your trademark registration is challenged with a Petition to Cancel, responding promptly and effectively to protect your rights is crucial. Our law firm provides comprehensive services to help you navigate this process. We will thoroughly review the petition, assess the grounds for cancellation, and develop a robust defense strategy tailored to your situation. Our experienced attorneys will prepare and file a detailed answer to the petition, addressing each claim and presenting evidence to support the continued validity of your trademark. We will also represent you in any hearings or proceedings before the Trademark Trial and Appeal Board (TTAB), ensuring your interests are vigorously defended. Timely and strategic responses are essential to maintaining your trademark registration and safeguarding your brand. Contact us for expert assistance in responding to a Petition to Cancel.
For more detailed information on filing a Petition to Cancel, you can visit the following USPTO pages:
Like litigation and trademark oppositions, petitions to cancel often settle. However, in some cases, prolonged litigation may be necessary. The attorneys at Thomas P. Howard, LLC have experience handling Petitions to Cancel proceedings on behalf of our clients. Our team is well-versed in both the procedures and the relevant laws. For a free consultation regarding petition to cancel issues, please email or call us at (303) 665-9845.