Once a trademark is registered with the USPTO, a business who believes that the registrant is not entitled to that registration may bring a Cancellation, or a Petition to Cancel the mark. Once a Petition to Cancel is filed, it kicks off a proceeding similar to a court case, where both sides plead their cases through extensive filings, discovery, interrogatories, and depositions. Once both sides have presented their cases, then the Trademark Trial and Appeal Board rules on the case.
A Cancellation may be needed in order for a trademark applicant to register their trademark. Sometimes, the USPTO will refuse a trademark application because of an existing trademark registration. If that is the case, the applicant may look at whether the registration being cited by the USPTO can be cancelled because of various reasons.
On the other hand, if you recieve a Petition to Cancel against a trademark that you own, contact an attorney to discuss the case and go over your options and start to develop a personalized plan moving forward.
As with any litigation, it is often possible to work out a settlement between the two parties. The attorneys at Gerben Law Firm have extensive experience negotiating positive settlements for our clients. If settlement is not possible, Gerben Law Firm uses cutting-edge technology and experience to reduce the cost to our clients while providing high-quality legal representation. We’ve been involved in hundreds of Trademark Trial and Appeal Board proceedings and offer free consultations.
Tips for Trademark Cancellations:
Once a Cancellation is filed, the Defendant (the Registrant) has 40 days to respond. If there is no response, the case will automatically be ruled in favor of the Plaintiff (Complainant) and the registration will be canceled.
The Trademark Trial and Appeal Board is the administrative board that rules on appeals from the United States Patent and Trademark Office.
Certain claims cannot be brought after a certain amount of time, under certain circumstances. Contact us for an individualized case strategy.