Trademark cancellation is a legal process designed to challenge and potentially remove an existing registered trademark. There are three primary methods to initiate a cancellation, with the traditional process being managed by the U.S. Trademark Trial and Appeal Board (TTAB). This traditional cancellation process is modeled after federal civil litigation, making it complex, time-consuming, and often costly.
Common grounds for trademark cancellation include:
Priority: A prior trademark right exists that predates the challenged registration.
Deceptive: The trademark is misleading or deceptive in nature.
Likelihood of Confusion: The trademark is likely to cause confusion with an existing registered mark.
Merely Descriptive: The trademark is merely descriptive and lacks the distinctiveness required for protection.
No Use in Commerce: The trademark has not been used in U.S. commerce as required.
Not the Rightful Owner: The registrant is not the true owner of the trademark.
Fraud: The registrant provided false information or deceptive evidence during the application process.
Abandonment: The trademark has been abandoned due to non-use.
Misrepresentation of Source: The trademark misrepresents the origin of the goods or services it identifies.
To address fraudulent trademarks more efficiently, the Trademark Modernization Act introduced two streamlined ex parte cancellation procedures: Ex Parte Expungement and Ex Parte Reexamination. These options are simpler and less expensive compared to the traditional cancellation process:
Ex Parte Expungement allows for the removal of trademarks that have never been used in commerce or whose use does not align with the goods or services listed in the registration. This process can be initiated by anyone for trademarks that have been registered for at least three years.
Ex Parte Reexamination focuses on verifying whether the trademark was in use at the time of filing or, in cases of intent-to-use applications, whether it was used as required later. This procedure must be initiated within five years of the trademark’s registration date.
Given the intricacies involved in trademark cancellation, it is highly recommended to consult with experienced legal professionals. If you need assistance with initiating or defending against a trademark cancellation, please reach out to us at: ip@zyllaw.com.