If you have received a cease-and-desist letter for trademark infringement or a USPTO preliminary refusal in which another registered trademark is cited as an obstacle to registration, one possible strategy is to seek trademark cancellation.
Trademark cancellation is a procedure that allows a party to challenge a registered trademark and seek its removal from the register.
Cancellation procedure is gaining popularity. During fiscal year 2025, a total of 2,897 cancellation proceedings were filed before the TTAB, representing a 14.1% increase compared to the previous year.
Although the cancellation process is similar to the trademark opposition process, they are separate procedures. The key difference between these processes is that a notice of opposition is filed against a trademark that has not yet been registered (within 30 days from the date of publication of the application in the Official Gazette), and a petition to cancel is filed against an already registered trademark.
Both processes are being reviewed by the Trademark Trial and Appeal Board (TTAB).
The grounds for cancellation are often similar to the grounds for filing an opposition, but with certain differences.
You can learn more about trademark opposition here.
Who Can Initiate a Trademark Cancellation
To file a petition to cancel, the petitioner must demonstrate standing.
According to the Lexmark test, a party has standing if:
- Its interests fall within the “zone of interest” protected by the statute, and
- There is “proximate causation” between their alleged injury and the alleged statutory violation.
In practice, this typically takes the following form: you applied for a trademark registration and received an Office Action based on similarity to another trademark. This defines your standing.
For example, in Zuffa, LLC v. Byron Belin (Cancellation Proceeding No. 92077633), Petitioner filed an application for registration of the mark BMF, and the USPTO brought an Office Action on the grounds of similarity to the trademark which was the subject of the cancellations. In contrast, in NH Beach Pizza, LLC v. Cristy’s Pizza Inc. (Cancellation Proceeding No. 92058955), the Petitioner stated that they would be damaged by the registration of the “beach pizza” trademark. However, they did not provide allegations regarding the nature of their business and other details that would show standing.
The key point is that it is not sufficient merely to declare standing, but also to prove it with evidence during the proceeding.
Grounds for Trademark Cancellation
The grounds for cancellation differ depending on whether the challenged trademark has been registered for more or fewer than 5 years.
Trademarks Registered for Less than Five Years
If the trademark has been registered for less than 5 years, the grounds for cancellation are essentially identical to those for filing an opposition, including:
- likelihood of confusion with a previously registered trademark.
- Priority with the common law trademark.
- Descriptiveness.
- Functionality, and
- other statutory grounds.
Additionally, a trademark can be cancelled if it is abandoned.
Trademarks Registered for More than Five Years
If the trademark has been registered for more than 5 years, the grounds for filing a cancellation are limited. For example, you cannot file a petition for cancellation of such a trademark on the grounds of likelihood of confusion.
The grounds for filing a cancellation of a trademark that is more than 5 years old are:
- deceptiveness.
- Falsely suggesting a connection with persons, institutions, beliefs, or national symbols.
- The mark has become generic since registration.
- Abandonment.
- Fraud.
- Functionality.
- Non-use of the mark at any time after 3d anniversary of the registration’s issuance.
- If the mark has never been used in commerce.
Given these limitations, if you have received a preliminary refusal with the mark cited and see that there are grounds for its cancellation, first, determine how many years the trademark has been registered.
For instance, consider the scenario where you have used a trademark for many years and accordingly have common law rights. After some time, you decided to apply for trademark registration, but received a preliminary refusal due to the existence of a similar registered mark (based on the likelihood of their confusion).
If this similar trademark has been registered for 4.5 years, it is important not to delay and to consider filing a cancellation action promptly. Once the five-year period passes, cancellation on this ground will no longer be available.
Trademark Cancellation Procedure
A cancellation proceeding may be filed against trademarks registered in either the Principal Register or the Supplemental Register.
A petition to cancel is filed with the TTAB, and the filing fee is $600 per class.
After the petition is filed, the TTAB issues a Notice of Institution, which sets the schedule for the proceeding and provides key procedural information to the parties.
The trademark owner (the respondent) must then file an Answer to the petition.
If the respondent fails to respond, the TTAB may issue a Notice of Default. If, within 30 days, the Respondent does not show why the default judgment shall not be entered against him, TTAB will cancel the trademark registration. For instance, in Blue Ice Mountain Works SA v. Massoud Davoudzadeh (Cancellation Proceeding No. 92069506), the respondent failed to file an answer, which resulted in a notice of default and later a decision cancelling the registration.
If the respondent files an answer, the case proceeds to the discovery phase. Discovery before the TTAB is similar to discovery in U.S. federal courts and typically includes:
- An initial discovery conference.
- Initial fact disclosures.
- Expert witness disclosures (if applicable).
- Final pre-trial disclosures.
After discovery, the case moves to the testimony period, during which the parties submit evidence and written briefs.
The TTAB then issues a written decision. If the petition is granted, the trademark registration is cancelled. If the petition is denied, the registration remains in force.
In practice, however, many cancellation proceedings do not reach trial but instead are concluded through settlement between the parties.
Conclusion
Trademark cancellation can be an effective strategy when another registration blocks your trademark application or when a third party asserts trademark rights against your business. However, the success of a cancellation action often depends on several critical factors. These include timing, standing, and the available legal grounds.
Because these proceedings involve complex procedural rules and evidentiary requirements, careful legal analysis is essential before initiating a cancellation.
If your trademark application was refused due to a likelihood of confusion or if you received a cease-and-desist letter for trademark infringement, a cancellation proceeding may be one of the available legal strategies. Book a free consultation with Mariya Ortynska to receive comprehensive guidance on TTAB proceedings.
You might also be interested: How to Reduce the Risk of Trademark Refusal Based on Likelihood of Confusion