What is Trademark Cancellation?
A trademark cancellation is the process of removing a trademark that’s been registered, such as if it’s been abandoned or creating confusion by being too similar to an existing trademark.
Cancelling a trademark can help to protect a brand’s rights. If you’re a business owner who thinks that another company’s trademark is causing harm to your reputation in the market, you can start the trademark cancellation process.
Read the rest of this article to learn more about how the trademark cancellation process works and how a lawyer can help you navigate it for a successful outcome.
What are Common Reasons for Trademark Cancellation?
Some of the most common reasons why trademark cancellation occurs include the following:
- Non-use. This refers to trademarks that haven’t been used in commerce for a specific amount of time, which is usually a period of three consecutive years in the U.S.
- Generic trademark. If a trademark is too generic, it doesn’t identify goods or services in a distinct way.
- Fraud or misrepresentation. This can be as a result of the trademark owner providing false information when applying to register their trademark.
- Abandonment. When a trademark is abandoned, it means that the trademark owner isn’t using the mark and isn’t intending to use it.
- Likelihood of confusion. This is one of the most common reasons for trademark cancellation. It refers to a trademark being too similar to an existing trademark, which can result in it being cancelled to prevent customer confusion.
How Do You File a Trademark Cancellation?
If you want to cancel a trademark, you should follow these steps:
File a Petition with the USPTO (U.S. Patent and Trademark Office)
A petition to cancel a trademark is a legal filing that you’ll have to submit to the USPTO’s Trademark Trial and Appeal Board (TTAB). It has to be filed after the trademark has been registered, unlike a trademark opposition which gets filed during the registration process.
Choose a Specific Reason for Filing
It’s important to know that filing a petition to cancel can be done within five years of trademark registration or after five years of registration, but the former is usually more successful.
If you try to cancel a trademark within the first five years of the trademark having been registered, you can petition to cancel it because of reasons such as the following:
- There’s a likelihood of confusion with your trademark.
- The trademark was fraudulently registered.
- The trademark hasn’t been used in commerce.
- The trademark is generic.
If you want to cancel a trademark after five years of registration, this can make it incontestable. You’ll have to ensure that your cancellation petition is done for specific reasons, such as the following:
- The trademark has become generic.
- The trademark was fraudulently registered.
- The trademark has been abandoned. This means that the trademark owner has stopped using it and doesn’t intend on resuming its use.
Petition Review
After filing your petition to cancel a trademark, the USPTO will review it. If your petition is approved, they will notify the trademark owner, who will have a chance to respond to the claim.
Sharing Evidence
If the trademark owner responds to the petition, the next step in the process will involve both parties providing evidence of their claims. They will have to present their cases in front of the Trademark Trial and Appeal Board (TTAB).
The TTAB will reach a verdict and decide if the trademark should be cancelled or not.
How Can You Improve Your Chances of Cancelling a Trademark?
If you want to file a petition for trademark cancellation, you should assess the trademark owner’s use of their mark in commerce. It will strengthen your case to have evidence of how they’re using the mark or not using it in the case of abandonment. Search for any activity in advertising, online presence, or sales activity.
When preparing evidence for your trademark cancellation claim, you should consider your rights in commerce and registrations that can support your position.
What are Legal Options for Trademark Cancellation?
Trademark cancellation doesn’t have to result in litigation. There are other ways in which to deal with the issue of trying to cancel a conflicting mark, such as:
- Sending a cease-and-desist letter. While this isn’t part of the trademark cancellation process, it’s a formal letter you can send to another trademark owner if you believe that they are infringing on your trademark. You’ll inform the other party about the trademark conflict and request that they stop using the mark.
- Engaging in settlement discussions. Parties might be able to negotiate and agree on drafting a coexistence agreement, allowing them to use their trademarks within specific limits and territories.
How Can a Lawyer Help You With a Trademark Cancellation?
Trademark cancellation can be a complex process, so you can benefit from hiring a lawyer for assistance. They can help you in various ways, such as by:
- Guiding you through the legal strategy involved.
- Assessing if you have valid grounds for requesting a trademark cancellation, which prevents you from wasting time or money on a poor claim.
- Gathering evidence to support your position, such as market confusion.
- Preparing and filing all required documents.
- Handling all correspondence and negotiations with the other party.
- Representing you in hearings or court proceedings, helping you to present clear and valid arguments.
- Increasing your chance of having a successful trademark cancellation without legal or financial risks.
Where to Find a Lawyer for Trademark Cancellation
If you need to hire a lawyer for a trademark cancellation, you can find a vetted lawyer on ContractsCounsel, one of the largest online legal marketplaces where you can connect with experienced, skilled lawyers. They have worked with previous clients on trademark cancellations and understand the process to guide you through it.
If you need to review or draft any documents, such as coexistence agreements or affidavits, you can request this on the ContractsCounsel platform. Here are the steps to follow:
1. Visit the ContractsCounsel marketplace, where you can post your project for free.
2. You’ll receive multiple bids from lawyers on the platform.
3. Once you receive lawyer bids, review the lawyers' profiles. The platform provides useful lawyer information, such as location, client ratings, years of experience, and field of expertise.
4. Connect with a lawyer you think is best suited to your requirements and hire them.
