The United States Patent and Trademark Office (USPTO) will refuse registration of a trademark that is confusingly similar to an existing registration. They do not review any unregistered use in the marketplace when making this determination. If a competitor files a trademark application first, the USPTO will not refuse registration based on prior use in the marketplace, even if that use existed for years. 

Trademark registration grants exclusive rights to the registrant, meaning they can prevent others from using the mark in commerce. If a competitor obtains earlier registration for an identical or confusingly similar trademark, it can cause great harm to a business. Filing a Petition for Cancellation of a competitor’s trademark registration is one tool that may be utilized to enforce and protect a business’ valuable trademark rights. A Petition for Cancellation is filed with the Trademark Trial and Appeal Board (TTAB), which is a division of the USPTO that hears disputes over trademark registrations.

The Grounds for Canceling a Trademark Registration

Before taking any action, it’s important to understand the grounds upon which a trademark registration can be canceled. A Petition to Cancel a trademark registration must identify the relevant grounds for cancelation. It is important the Petition meets all requirements before the TTAB will formally initiate the proceeding.

A trademark registration on the Principal Trademark Register has a presumption of validity. In order to successfully cancel a registration, a Petitioner must allege sufficient grounds for cancellation and have the burden of proof to demonstrate these grounds.

Two of the most common grounds for cancellation include the likelihood of confusion and earlier use. Likelihood of confusion exists if the registered mark is identical or similar to the Petitioner’s existing mark such that the marks are likely to be confused with each other. If a Petitioner has been using the mark in the United States in relation to the same goods or services before the competitor, they would have earlier use and senior rights to the trademark. If the competitor knowingly obtained a registration for a trademark that was already in use by another party, there may also be grounds for alleging the registration was obtained fraudulently.

How and When Can a Petition For Trademark Cancellation be Filed?

Anyone who believes they may be harmed by the continued registration of the mark may file a Petition for Cancellation. 

If a competitor has registered another business’ trademark, a delay in taking action can impact the remedies available. For example, after a mark has been registered for 5 years, the grounds under which the registration may be canceled are limited. 

The first step to initiating a cancellation proceeding is to prepare a Petition for Cancellation, including all of the grounds under which the registration should be canceled. Once prepared the Petition must be submitted to the TTAB electronically, along with payment of the required fees. Once filed and accepted by the TTAB, the trademark registrant will have 40 days to submit their Answer. If they do not submit a response, the TTAB may issue a default judgement in the Petitioner’s favor. If they do submit a response, the Cancellation proceeding will move forward with the discovery and trial phases. The timeline for a proceeding can be upwards of 1-3 years.

Why File a Petition for Trademark Cancellation?

A Petition for Cancellation can be a powerful legal tool to protect valuable trademark rights and prevent potential confusion with an existing mark. 

Trademark owners have a duty to police their marks for potential trademark infringement and take action against infringers to protect their trademark rights. If a competitor has registered the same trademark, it is very important to take action to preserve the goodwill and value of the trademark. If it is not canceled, a competitor’s trademark registration may also prevent a rightful trademark owner from registering its own mark.

Cancellation proceedings are generally less costly than litigation in court. If a registration is successfully canceled, it may help to avoid more costly litigation in court in the future.

A Cancellation proceeding may be useful as leverage when enforcing trademark rights. A competitor that is facing a Cancellation proceeding may be more likely to cease use of an infringing mark, if their chances of success are unlikely.

If a competitor has registered a trademark that conflicts with yours, the process of canceling their registration is a powerful legal tool to protect your intellectual property. By filing a petition for cancellation with the TTAB, you can contest the registration based on grounds such as the likelihood of confusion, prior use, or fraudulent registration. Understanding your rights and the cancellation process is critical for ensuring that your trademark remains exclusive and your business is not harmed by a competing mark. Before commencing a proceeding, it is important to understand the strengths and weaknesses of the case and whether there are sufficient grounds for filing a petition to cancel a trademark registration. Consulting with an experienced New York City Intellectual Property attorney can help provide all the information needed to make an informed decision on whether to commence and how best to proceed.