Trademark cancellation and opposition proceedings are initiated by parties who believe they will be or are harmed by the registration of a certain trademark. The Trademark Trial and Appeal Board (TTAB) of the USPTO adjudicates these proceedings. The main difference between the two proceedings is that cancellation proceedings are filed against existing registrations and opposition proceedings are filed against pending applications.

What is a Trademark Cancellation Proceeding? 

A trademark cancellation proceeding permits a party to file a petition to cancel an existing third-party trademark registration. A trademark registration may be canceled for a number of reasons, including abandonment, genericness, or fraud. For example, if the registrant has ceased use of the mark for a period of 3+ years, and has no intention to use the mark again, this can be considered abandonment of the mark. If a mark has become generic for the goods or services listed on the registration, it may no longer be eligible for continued registration. If there has been any fraud committed by the Registrant when obtaining or renewing the trademark registration, it may be canceled. 

What is a Trademark Opposition Proceeding? 

A trademark opposition proceeding permits a third party to oppose the registration of a trademark that is the subject of a pending trademark application. For the party opposing, the goal of a trademark opposition proceeding is to prevent the registration of a mark. A Notice of Opposition may be sent to the TTAB by a party that feels that the registration of another party’s trademark would cause harm to them. While there are a number of reasons a party may file a trademark opposition, one of the most common reasons is that the applicant’s trademark is likely to mislead and confuse the relevant public into thinking that the applicant’s products or services are provided by the same source as those of the opposing party.

Key Similarities and Differences Between Trademark Cancellation Proceedings and Opposition Proceedings 

Trademark cancellation proceedings and trademark opposition proceedings are initiated at different stages of the federal trademark registration process. A Notice of Opposition can only be filed during a particular stage of the application process and it can be used to prevent registration of a mark. A Petition to Cancel a mark can only be initiated against trademarks that have already been registered. Both proceedings are litigation proceedings that take place before the TTAB.

Some of the grounds that can be used as a basis for opposing or requesting cancellation of a mark differ by the nature of the proceedings. For example, a claim of abandonment of a mark may not be made in an opposition proceeding, as the mark has not yet been registered. However, in an opposition, a third party may claim that the applicant has no bona fide intention to use the mark and/or has not actually used the mark if the application alleges that the mark is already in use. While these grounds are different, the key takeaway in both is that continued use of a mark is key to obtaining and maintaining a trademark registration. 

A TTAB proceeding only addresses and adjudicates whether a trademark is eligible for registration or to maintain a registration. A TTAB judgment does not address the right to use a particular trademark in the market. Even if successful in a TTAB proceeding, if there is concern about ongoing trademark infringement, it is important to take additional steps to compel a party to cease use of a mark. 

Protect Your Most Important Assets With the Help of an IP Attorney 

Consulting with an Intellectual Property Law Attorney who is experienced in TTAB matters can be helpful in navigating these proceedings and taking steps to secure and maintain trademark rights.