Trademark cancellation proceedings are initiated by parties who believe they will be or are harmed by the continued registration of a certain trademark. The Trademark Trial and Appeal Board (TTAB) of the USPTO adjudicates these proceedings.

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. In a cancellation proceeding, the petitioner has the burden of proving their claims. The standard by which they must prove their claims may vary but is generally by a preponderance of the evidence.

What Burdens of Proof Need to be Met For Trademark Cancellation?

To initiate a cancellation proceeding, a petitioner must file a Petition to Cancel with the TTAB. The Petition must include a statement of all the reasons the petitioner believes that it will be harmed by the continuing registration of the mark. This establishes standing for the petitioner to file the Petition. The Petition must also include a statement on each of the grounds for cancellation of the registration.

The Burden to Plead

The petitioner has the burden to provide sufficient facts and legal grounds to support the Petition. This is different from the burden of proof. The burden to plead ensures that the Petition to Cancel begins with clear, properly stated claims before the burden of proof is applied during the case. Some commonly pleaded grounds include: 

1. A likelihood of confusion with the Petitioner’s mark, which has senior rights
2. The registered mark is merely descriptive, deceptively misdescriptive, or geographically misdescriptive
3. The owner of the registration is not the rightful owner of the mark 
4. The mark has been abandoned
5. The owner of the registration obtained it fraudulently.

The Burden to Prove

The petitioner has the burden of proof in a Cancellation Proceeding. This means that he or she must provide enough evidence to support the claims and facts that were pleaded in the Petition to Cancel. While some grounds for cancellation may require a higher burden to prove, most grounds must be proven by a preponderance of the evidence, which means the Petitioner must show their claim is more likely true than now. If the petitioner fails to do so, the Cancellation proceeding may be dismissed or the TTAB Board may issue a judgment in favor of the registrant.

Work With a Seasoned New York City Trademark Attorney

Consulting with a New York City intellectual property attorney who is experienced in TTAB Cancellation Proceedings can be helpful in navigating them as either the Petitioner or Defendant. It is important to ensure that, as a Petitioner, you have sufficiently pleaded and provided evidence to be successful. As a Defendant, identifying deficiencies in the Petitioner case can be key to successfully protecting your trademark registration.