Trademark Battles: A Guide to Filing or Responding to a Petition to Cancel

By Josh Gerben, Esq. and Sophie Edbrooke, Esq.

The United States Patent and Trademark Office (USPTO) received over 545,000 trademark applications in 2022.

While examining attorneys review each application carefully prior to approval, they are limited in the scope of their examination to application data only. This sometimes leads to the registration of a trademark that is too similar to existing marks.

If a damaging trademark has already been registered with the USPTO, you may still be able to protect your trademark by filing a Petition to Cancel against the other mark.

What is a Petition to Cancel?

If a trademark owner believes a registered trademark is causing damage to their trademark rights, they can file a Petition for Cancellation or Petition to Cancel with the Trademark Trial and Appeal Board (TTAB). A Petition to Cancel may be filed by anyone who has a good faith belief that a trademark is damaging to them.

So, what does this look like in practice? Below is an example:

Business A has been operating “A Business” for 25 years but was recently advised to file a trademark to protect its clever name. Unfortunately, Business A’s application was rejected because “A Business” was already registered by Business B, and Business B says they began using the mark three years ago.

Business A doesn’t believe that Business B should own that trademark, so it’s going to file a cancellation against the “A Business” registered trademark.

Business A can file a Cancellation against Business B’s mark because:

1. Business A has “standing.”
2. Business A has a valid reason to file a Cancellation (Business A has been using the mark longer).

When a trademark owner finds out that another individual or business owns a registered trademark that the proper owner does not believe the registrant has a right to, the owner is allowed to file before the TTAB to “cancel” that infringing registration.

What is standing?

A Cancellation can only be filed by someone who is going to be affected by the continued registration of the infringing trademark. The ability to file a Cancellation is called having “standing.” Most often, the filer, or the “petitioner,” is a person or a business that operates in the same field of business as the registrant.

The most common way a petitioner can prove standing is by showing prior rights in a trademark that is the same or similar to the infringing registered mark. The petitioner must also have a legitimate interest in the trademark and cannot just cancel a competitor’s trademark to interfere with their business.

Valid reasons to file a Cancellation

The Lanham Act that governs trademark law offers allowable reasons for Cancelling another’s trademark registration. A business can file a Cancellation for any of the following reasons:

1. The mark is too similar to a trademark that you have prior rights in (the A Business example).
2. The mark is merely descriptive or generic for the goods and services it is registered for, and, therefore, consumers would not recognize it as a brand.
3. The mark is a surname, geographically descriptive for the goods, or is functional for the goods and services.
4. The mark is trading off of a famous mark.
5. The mark was wrongfully registered because it was never used in commerce (and the petitioner used fake specimens or falsified declarations of use).
6. The mark is disparaging, immoral, or scandalous.

This list isn’t exhaustive, but it gives petitioners a good understanding of what types of marks can be cancelled and for what reasons. Multiple valid grounds may exist, and the petition allows more than one option to be selected.

How to file a trademark Cancellation

After a trademark owner finds an infringing mark, they must first determine if they have standing as well as valid grounds for Cancellation. If they do, the trademark owner can file a Petition for Cancellation at the TTAB.

The petition isn’t a long, in-depth argument of the merits of the case, but instead lays out the basis for the argument and begins the formal process of Cancellation. These petitions are formal documents and have guidelines as set forth by the Trademark Trial and Appeal Board Manual of Procedure (the TBMP).

The Electronic System for Trademark Trials and Appeal (ESTTA) provides online filing for numerous requests, petitions, and other filings. The Petition for Cancellation can be found under the section titled “File a New Proceeding.”

Remember that the initial filing does not require a petitioner to prove any claims. Having a good faith belief that the statements are true is sufficient for this stage of the process.

What to include in a Petition for Cancellation

The ESTTA form itself will ask for extensive information regarding the filing petitioner and the trademark in question. Filers should be prepared with the following:

• the registrant’s name
• registration number and date of registration
• the trademark
• the registrant’s business or position title
• the address of the registrant
• which goods the petition applies to
• information on any related proceedings

Filers should include a short, simple statement of the reason relief is sought, as well as the standing and legal grounds for Cancellation.

The pleading is a separate document from the ESTTA Petition for Cancellation and must be attached prior to submitting it to the online system.

The pleading is where the plain and brief statement of the grounds for Cancellation is included, as well as an explanation as to why the petitioner believes they are being damaged by the trademark. Each reason should be listed in numbered paragraphs in the pleading.

Trademark Cancellation Proceedings

A Cancellation Proceeding will take place before the TTAB when a petitioner wishes to cancel an existing trademark. These proceedings can be daunting because they are adversarial proceedings carried out like mini-trials between trademark owners.

Once a proceeding is “Instituted” by the TTAB, the TTAB issues a scheduling order like the one below to set out the dates for the rest of the procedure. The most important next step is for the registrant to file an answer.

Sample Scheduling Order:

As you can see from this sample scheduling order, the Cancellation process can take a significant amount of time.

Expedited Cancellation

An expedited process may be an option for some proceedings. Accelerated Case Resolution (ACR) provides an alternative to traditional TTAB proceedings involving multiple discovery deadlines and lengthy trial periods.

ACR allows a determination of the petitioner’s claims in a shorter amount of time, which can often be beneficial for all involved parties. This accelerated process reduces the complexity of the case by highlighting the development of facts rather than focusing heavily on claims and legal guidelines, which results in a more efficient system of review.

The TTAB is open to reviewing most claims using ACR, but there are some cases that are better suited. Cancellation requests that meet the following criteria may be ideal candidates for expedited proceedings:

• Little or no discovery is needed.
• The parties agree on many facts of the case.
• Few witnesses will be called to testify.
• The parties agree that the TTAB will resolve lingering disputes.

It is also helpful to accelerate proceedings if both the petitioner and the respondent agree to the admissibility of the majority of evidence in the record and few objections will be made. The TTAB may not agree to consider claims under ACR if the facts of the case or relevant legal theory are too complex and would be better served in a traditional proceeding.

Further, both parties must consent to implementing ACR and a TTAB attorney or judge must agree. The respondent or petitioner cannot unilaterally request this accelerated process. During the discovery conference, the parties must discuss ACR and, if they agree, can consult with the TTAB for guidance on qualifying for the process.

Expedited Cancellation Pilot Program

Because of the lengthy timeframes of Cancellation Proceedings and the potential for harm that exists for trademark owners, additional means for expediting certain Cancellation Proceedings were explored by the USPTO.

The TTAB implemented an expedited cancellation pilot program from 2018 through 2020 in response to the many inquiries for faster and easier Cancellation processes. The Board explored options for a more streamlined system for Cancellations based on abandonment and nonuse claims.

This pilot program differed from the traditional Cancellation Proceedings by utilizing the following format:

• The filer’s initial petition included evidence of their claims.
• The answer to the Petition for Cancellation included counter-evidence.
• The petitioner had a chance to reply to the counter-evidence and claim.
• The discovery process was kept to a minimum and concerned only the petitioner’s standing.

Ultimately, the USPTO implemented the Trademark Modernization Act, which went into effect in December 2021. The Act provided individuals and businesses needing to protect their marks with methods to cancel unused trademarks more efficiently.

New procedures were created, such as ex parte proceedings, with the intention of expediting trademark cancellations. The Trademark Modernization Act applies only to nonuse, but this could be relevant for potential petitioners, given the timeframes for filing for Cancellation.

When Can a Petition to Cancel be Filed?

A Petition for Cancellation can be filed at any point, but preferably within five years of the trademark registration in question. If filed within five years, there are numerous grounds for requesting Cancellation, including that the registrant is not the rightful owner of the mark.

After five years, the list of applicable grounds for Cancellation becomes much shorter. Petitioners will no longer be able to file simply based on rightful ownership after five years have passed, so submitting the petition within that timeframe is preferable if a filer wishes to base their claim on such grounds.

Specific grounds that petitioners can claim even after five years have passed since registration include:

• The mark is generic
• Abandonment of the mark
• Misrepresentation of the goods or services
• Fraud
• Violations of the Trademark Act
• The mark is deceptive in some way

Cancelling a Trademark Before Registration

If a trademark owner finds out about a trademark application that will be damaging to their existing mark, they do not need to wait for registration to oppose it. If the mark has not been registered, a Notice of Opposition can be filed. There is a shorter deadline for a Notice of Opposition than a Petition for Cancellation, but an extension can also be filed if necessary.

When a USPTO examining attorney approves an application, it is published online in the Trademark Official Gazette. Once published, anyone who believes they will be harmed by the registration of the mark can oppose it. A Notice of Opposition, or an extension of time to oppose, must be filed within 30 days of publication.

The Notice initiates a trademark opposition proceeding with the TTAB. A formal Notice of Opposition must meet the TTAB’s strict rules or risk being thrown out. It should be a relatively short description of the claims and include the filer’s standing and grounds. 

Filing Fees and Costs for a Petition to Cancel

The TTAB filing fee for a Petition to Cancel is $600 per class when filed electronically.

If the trademark in question is for multiple classes, the $600 fee must be paid for each. For example, the filing fee for a trademark registered in three classes would equal $1,800. These fees cannot be refunded regardless of the outcome of your case.

The highly regulated nature of USPTO registrations and TTAB proceedings means that many petitioners choose to hire an attorney to represent them. Defendants, or those that have the Cancellation filed against their mark, also often hire legal representation.

If you decide that having legal counsel help you navigate this process is the best choice, you will also need to factor in attorney’s fees.

Do You Need an Attorney?

Only non-US citizens or those representing businesses outside of the US are required to have attorney representation in TTAB proceedings. However, while the choice to hire a lawyer may exist for everyone else, many parties in Cancellation Proceedings choose to work with an experienced trademark attorney.

There is a lot at stake, government processes are complex, and proceedings are adversarial in nature. For these reasons, hiring a lawyer is the safest way to protect your interests and build your case.

How to Respond to a Petition to Cancel

When a Petition for Cancellation is filed with the TTAB, the respondent will receive a Notice of Institution that includes a copy of the Petition. The respondent, also called the defendant, must file an Answer to the Petition within 40 days.

If no Answer is filed or the deadline for filing is missed, there may still be an opportunity for the respondent to respond and continue with Cancellation Proceedings.

A Notice of Default will be issued by the TTAB, giving the respondent 30 days to convince the Board not to enter a judgment against them. However, if neither Notice receives a response, a default judgment will likely be entered in favor of the petitioner, and the trademark in question will be Cancelled.

The TTAB requires that respondents answer online through their ESTTA system. Under the heading “File Documents in a Board Proceeding,” respondents will choose the general filing option and enter the Cancellation number. After filing in ESTTA, a copy of the answer will also need to be served upon the petitioner. 

Completing an Answer to a Petition to Cancel

The TBMP lays out all the necessary requirements and rules for filing an answer to a Petition to Cancel with the TTAB, and it is crucial that respondents follow each guideline and adhere to every rule. In general, an answer should include a specific response to each of the claims in the petition and be formatted in numeric order that corresponds with the Petition’s paragraphs.

Respondents will need to admit or deny each claim and provide legal defenses against the petitioner’s allegations. However, evidence and arguments refuting the claims made in the Petition for Cancellation should not be included.

There is a fine line between stating the facts and arguing your case, so tread carefully in your Answer so as not to include anything the TTAB considers unnecessary or inadmissible.

There is also an option to file a counterclaim within the answer, which would essentially be the respondent’s own Petition for Cancellation of marks owned by the petitioner. Respondents who choose to file a counterclaim as part of their answer would need to pay their own filing fee and be prepared to satisfy all initial pleading requirements of the TTAB.

How much does it cost to file an Answer?

The filing of an Answer to a Petition for Cancellation is considered an inter partes filing. Inter partes means between the parties. An Answer to a Petition to Cancel does not require any new action or proceeding to be initiated, as it is merely a response to an already existing case.

The USPTO does not require a filing fee for most inter partes filings, so most answers will cost nothing to submit. However, filing costs will be incurred if a counterclaim is filed along with the answer.

DISCLAIMER: Please note that this article is for informational purposes only and may not be relied on as legal advice.

If you have questions about filing or responding to a Petition for Cancellation, reach out to Gerben IP by filling out our contact form.

• SHARE THIS ARTICLE ON:

Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Sophie Edbrooke, Esq.

Sophie Edbrooke, Esq. is an associate attorney at Gerben IP. She works closely with clients to provide individualized counseling on trademark and copyright matters, across a wide variety of industries. Before joining Gerben IP as an associate, Sophie worked for the firm as a law clerk and summer intern.