How Do You Cancel A Trademark?
You can make your mark in your trade with a registered trademark.
However, if you are not careful, your mark could be erased by someone else. That precious trademark is not in permanent marker.
It is possible that your trademark, as brilliantly clever as it is, may well be challenged by what is called a trademark cancellation petition, which can be filed by a third party such as a lawyer for some specified reason.
What is a Trademark Cancellation Petition?
When an entity (firm or individual) has grounds to challenge a trademark, the entity can file a petition to cancel a trademark through the U.S. Patent and Trademark Office. The petition is what it implies – it is a legal document requesting an administrative hearing in front of the Trademark Trial and Appeal Board (TTAB).
Why Could a Such a Petition be Filed?
A petition to cancel a trademark is specifically meant to be something other than a weapon of revenge or jealousy against another person who might have a successful trademark.
There are only a limited number of grounds to bring a petition to cancel a trademark before the TTAB. These are:
- The mark is too generic (like a company called “Balloon”);
- The mark has not been used for at least three years, with no apparent intent to re-use;
- The mark was achieved fraudulently; or
- What is called “priority,” where the mark interferes with the ability to do business or the mark was used by another party before it was registered.
Is There a Time Limit to File a Petition?
Generally speaking, a petitioner has up to five years after the registration date in order to file a petition to cancel, though a petition filed after five years may be heard under very strict circumstances.
What is a Trademark Cancellation Proceeding Like?
This is a legal proceeding in an administrative setting, which is in some ways similar to a civil court case. It is an adversarial proceeding, which means that the registrant and petitioner may cross-examine each other and scrutinize each other’s evidence and testimony in the case. Because of this, it is not advisable for a party to represent himself for herself in the proceeding, but instead, have a knowledgeable patent law attorney represent your interests.
What is the Result of This Proceeding?
Unlike a civil proceeding, an administrative proceeding like a trademark cancellation does not have monetary damages as a result of the hearing. Should the petitioner win, the trademark would be canceled. Should the registrant win the hearing, the trademark registration remain would intact. The parties may negotiate a settlement outside of the hearing, though.
The Bottom Line
It is understandable to protect your business assets by looking to establish a trademark for your company or your product. But make sure you do your research and check out the legal history of trademark applications to ensure there are no possible grounds for a petition. After that, follow all the rules regarding trademark registration to protect against claims of fraud.