A federal trademark registration is a valuable asset, but it remains subject to challenge after issuance. A party that believes it is or will be damaged by a registration can file a petition to cancel before the Trademark Trial and Appeal Board (TTAB), subject to certain time limitations and procedural requirements.

This post covers the grounds on which a trademark registration can be cancelled, the deadlines that affect which grounds are available, and the maintenance obligations that affect a trademark registration’s long-term strength.

Trademark Cancellation Proceedings: The Basics

A petition for cancellation is an inter partes proceeding before the TTAB in which a petitioner seeks to have an existing trademark registration declared invalid and removed from the Register. The proceeding follows the same general structure as a trademark opposition, with discovery, trial periods, and briefing, and is governed by the TTAB’s Rules of Practice.

The grounds available to a petitioner depend in part on how long the trademark registration has been in effect.

The Five-Year Threshold

Before a trademark registration reaches five years of age, it can be challenged on a broad range of grounds, including likelihood of confusion with a prior mark under Section 2(d) of the Lanham Act; priority of use; descriptiveness or failure to function as a trademark; fraud on the USPTO in procuring the registration; abandonment; and genericness.

After five years, the trademark registration may become eligible for incontestability status under Section 15 of the Lanham Act, provided the mark has been in continuous use, and the registrant files the required declaration. Once incontestability attaches, certain grounds for cancellation are no longer available, most notably likelihood of confusion based on a prior unregistered trademark and descriptiveness.

Grounds That Survive Incontestability

Incontestability forecloses some challenges but not all. A trademark registration can still be cancelled after incontestability attaches on the following grounds: abandonment through non-use with intent not to resume; genericness; fraud on the USPTO; misrepresentation of source.

Abandonment and genericness are among the most commonly litigated grounds in post-incontestability cancellations. Both require substantial evidentiary development to establish.

Abandonment

A trademark is considered abandoned when use has been discontinued with intent not to resume. Under the Lanham Act, three consecutive years of non-use creates a rebuttable presumption of abandonment, which a registrant can overcome by demonstrating that non-use was excusable or that use in fact continued.

Constructive abandonment, sometimes called naked licensing, arises when a registrant licenses a mark without maintaining adequate quality control over the licensee’s use. Courts and the TTAB have found marks abandoned on this basis where the licensor exercised no meaningful supervision over how the mark was used in commerce.

Genericness

A trademark becomes generic when the primary significance of the term to the relevant consuming public is the name of the class of goods or services rather than an indicator of source. Once generic, a trademark cannot function as a trademark regardless of its registration status or prior fame.

Genericness claims are difficult and resource-intensive to prosecute because they require substantial consumer survey evidence and market analysis. They are most often asserted against marks that have become so well-known that consumers use them as category names rather than brand identifiers.

Fraud on the USPTO

A trademark registration obtained through fraud can be cancelled at any time. Fraud in this context requires proof of a knowingly false, material representation made with intent to deceive the USPTO. The standard is strict. Negligence or recklessness is insufficient. Good-faith errors in an application, even significant ones, generally do not support a viable fraud claim.

Common scenarios that generate fraud allegations include false declarations of use, overbroad identifications of goods and services that do not reflect actual commercial use, and false claims of ownership or priority.

Registration Maintenance

Maintaining a federal trademark registration in good standing requires attention to several ongoing obligations, including filing the Section 8 affidavit of continued use between years five and six; filing the Section 15 affidavit of incontestability if eligible; filing the Section 9 renewal affidavit between years nine and ten, and every ten years thereafter; maintaining consistent use of the mark in commerce; exercising quality control over any licensed use; and keeping records of use that can support the registration if it is later challenged.

The USPTO does not monitor use after registration issues. Maintenance filings and use records are the registrant’s responsibility, and gaps in either can affect the registration’s enforceability over time.

Grant Attorneys at Law advises clients on trademark registration maintenance and represents petitioners and respondents in TTAB cancellation proceedings.

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