Intellectual Property | Copyright Infringement | Technology | Software

Overview of Trademark Cancellation Proceeding

Dec 29th, 2017 | By | Category: Trademark Litigation

Attorney Steve® Trademark College – What happens when someone wants to challenge your trademark?

TTAB trademark lawyer


This blog discusses trademark cancellation proceedings.  Say you have a federally registered trademark and then a company comes along (usually an alleged competitor) and demands through their intellectual property law firm that you cancel your trademark, and if not, they threaten to file a TTAB trademark cancellation proceeding.   Here are some things you should know.

What is the Trademark Trial and Appeal Board (“TTAB”)

The TTAB is an administrative body of the United States Patent and Trademark Office (“USPTO”).  They hear cases involving:

(1) Trademark Denials (appeal decisions denying trademark rights);

(2) Trademark cancellation proceedings (trying to cancel an existing trademark);

(3)  Trademark opposition proceedings (trying to prevent registration of a trademark).

What is a TTAB cancellation proceeding?

In the scenario above, the party that seeks to cancel your trademark will have to file a Petition to Cancel Trademark.  There has to be proper grounds to file the challenge (see below).  Once filed, the case proceeds just like a civil litigation case.  The responding party has 40 days to respond.  Then, the parties have initial disclosure requirements, and the parties proceed to engage in discovery pursuant to a scheduling order that fixes the discovery schedule.  This means, the parties can engage in written discovery including sending interrogatories, request for admissions, request for production of documents, and even depositions.  After discovery, there is a chance to submit the evidence each party has to the court and an opportunity to file written briefs.  The case is heard on the written record unless oral argument is allowed.  A decision is then rendered which decision can be appealed to federal court.  If the mark is ordered “cancelled” the responding party will have the mark “un-registered” and pulled from the Federal Register, but any common law trademark rights will still apply.

What are the grounds to seek cancellation of a trademark?

In order to initial a cancellation proceeding, there has to be proper legal grounds to make the challenge.

First, a party seeking to file a cancellation proceeding must have “standing” to file suit and must have “valid grounds” to file suit.  Standing means the party seeking to cancel the trademark is likely to be injured by allowing the opposing mark to exist.  Next, you need proper grounds to file.  Whether or not you have proper grounds to file the cancellation proceeding depends on how long the offending mark has been registered.  There are different grounds depending on whether the mark has been registered for MORE THAN FIVE YEARS or LESS THAN 5 YEARS.

Challenges permissible to make within 5 Years of registration

If the petitioner files the cancellation proceeding within 5 years of the disputed mark’s registration, the petitioner can raise any valid ground that any opposer could have originally claimed in opposing the registration of the mark.  For example, the most common grounds to attack the validity of a trademark are:

(1) Mark is likely to cause consumer confusion;

(2) Mark is merely descriptive,( merely geographically descriptive), or a surname mark;

(3) Mark falsely identifies the source of goods or services;

(4) There was no bona fide use of defendant’s mark in commerce prior to the filing of the use-based application, or there was no bona fide intent to use the mark when the applicant filed an Intent to Use application;

(5) Trademark holder abandoned the mark;

(6) Fraud was committed against USPTO in registering the mark;

(7) Dilution – the disputed mark dilutes another famous mark.

Possible challenges after 5 years of trademark registration

If the disputed mark has been registered for more than 5 years, the only grounds for cancelling a trademark are:

(1)  The mark has become generic;

(2)  The mark is “functional”;

(3) The mark has been intentionally abandoned;

(4) Fraud against the USPTO was committed in registering the mark;

(5)  The mark consists of immoral, scandalous or deceptive matter;

(6) The mark disparages or falsely suggests a connection with persons, living or dead;

(7) The mark misrepresents goods or services;

(8) The mark is not controlled by the registrant.

Attorney Steve® tip:  Note: if the mark has been registered for over 5 years, a petitioner cannot make the “likelihood of consumer confusion” argument that you can make if the mark has not been registered five years.

Common challenge – registered mark is likely to cause consumer confusion

One common challenge is one company making the claim that the registered trademark is likely to cause consumer confusion with their registered trademark (yes, you can have two federally registered trademark holders battling it out).  One federal court case from the 9th circuit discusses this important trademark concept:

“The only element of EMI’s trademark infringement claim in dispute is whether Smith’s use of the terms “EntrepreneurPR,” “Entrepreneur Illustrated,” and “” are “likely to cause confusion” as to their “origin, sponsorship, or approval.” “The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks.” Dreamwerks Production Group, Inc. v. SKG Studio, 142 F.3d 1127, 1129 (9th Cir.1998).
“In AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir.1979), this court developed an eight-factor test “intended to guide the court in assessing the basic question of likelihood of confusion.” E. & J. Gallo Winery v. Gallo Cattle Co., 967 F.2d 1280, 1290 (9th Cir.1992). The Sleekcraft factors, as applied to this case, are:
1. The strength of EMI’s trademark;
2. The similarity of the marks;
3. The proximity or relatedness of the goods or services;
4. Smith’s intent in selecting the marks;
5. Evidence of actual confusion;
6. The marketing channels used;
7. The likelihood of expansion of product lines; and,
8. The degree of care consumers are likely to exercise.
Sleekcraft, 599 F.2d at 348–49. The ultimate question of likelihood of confusion “is predominantly factual in nature,” as is each factor within the Sleekcraft likelihood of confusion test.  See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002)

Contact a Trademark Litigation Attorney

If you need help with a trademark cancellation proceeding, or need help with responding to an office action letter, trademark denial or opposition, contact us to discuss your case.  In some cases we may be able to offer a low flat rate legal fee.   Call us at (877) 276-5084.

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We are a business and civil litigation firm with a focus on copyright infringement cases involving illegal movie downloads (torrent cases such as London Has Fallen, ME2 Productions and Malibu Media defense), software audits (ex. Microsoft audits, SPLA, Autodesk audit notification letter, Siemens PLM defense, SIIA, Adobe and Business Software Alliance defense) and other software vendors threatening piracy and infringement. We also handle cases involving internet law, anti-SLAPP, media law, right of publicity, trademarks & domain name infringement, and we have a niche practice area handling California BRE licensing disputes, accusations, subpoena response, statement of issues and investigations. We have offices in San Francisco, Beverly Hills, Newport Beach, San Diego & Phoenix, Arizona and accept federal copyright and trademark cases nationwide. All content on our website is general legal information only and not a substitute for legal advice, and should not be relied upon. Decisions to hire counsel should not be based on advertising alone. Blogs, videos and podcasts are authored by Steve Vondran, Esq. unless otherwise noted. We can be reached at (877) 276-5084.

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