Registering a trademark is a rite of passage for many business owners. When that registration goes smoothly, you may feel elated and then relax, confident that all you must do now is file the appropriate maintenance documents at the correct times. One day, you receive a petition to cancel your trademark because someone else thinks you are infringing on theirs. This may cause a variety of feelings, including anger, frustration, panic, and anxiety. After all, this is your trademark, something your customers associate with you. What will happen if it is canceled? Before you allow your thoughts and fears of the potential cancellation to take over, take the time to deal with what is right in front of you: answering the petition. That is the first step to dealing with someone trying to cancel your trademark registration. If you would like assistance in responding to the petition, or have other questions regarding trademark cancellation, Sullivan & Carter, LLP, may be able to provide the guidance you seek. Call our Chicago office at (929) 724-7529 for an appointment where you may learn more after we review the details of your case.

What Is a Petition to Cancel a Trademark Registration?

Part of the trademark registration process includes looking for existing trademarks that are the same or similar to the one the individual or business plans to register and allowing a period for others to oppose the registration. However, this is not foolproof. There may still be instances where someone else has the same or a similar trademark. When this happens, or when an individual or business believes that their trademark rights are being damaged by a registered trademark, they can file what is called a Petition for Cancellation, also known as a Petition to Cancel, with the Trademark Trial and Appeal Board (TTAB).

Anyone with a genuine, or good faith, belief that their trademark is being damaged by a registered trademark can file a petition to cancel. However, they must also have standing and a valid reason for canceling the trademark.

Definition of Standing and Valid Reasons to Cancel

While a good faith belief that the trademark is causing harm is one requirement for filing a petition to cancel, standing and valid reason to cancel the mark are also required. While it can be challenging to prove that someone does not in good faith believe the trademark is causing harm, it can be easier to prove that they do not have standing or that their reason for canceling the trademark is not valid. However, first it is important to understand standing and what some valid reasons for canceling are.

Standing

Standing is a legal term. In a civil lawsuit, it means that the person has a legal interest and have something to lose or will otherwise be harmed by the other party’s behavior. In other words, it is the right of one party to challenge another party’s behavior in court. For example, if a homeowner’s tree falls on the home of their neighbor to the left, that neighbor has standing to file a lawsuit. The neighbor on the right does not have standing as the tree did not fall on their home.

In a petition to cancel a trademark registration, standing is very similar. For this purpose, it means the person or business is or will be affected by the continued registration of the trademark and that they have a legitimate interest in the trademark. In other words, they genuinely believe the trademark is infringing on their own rights; they are not just trying to hurt the competition. Generally, standing is shown by proving the petitioner has prior rights in a trademark that is the same or similar to the registered mark, and that both businesses are operating in the same field of business.

Valid Reasons for Cancellation

An individual or business cannot file a petition to cancel a trademark just because they do not like it or because they want to hurt the competition. They must have a valid reason to cancel. While there are many valid reasons the TTAB will accept for canceling a trademark registration, there are some reasons that are more common than others. These include:

• Too similar to another trademark
• Descriptive or generic for the goods or services and unrecognizable as a brand
• Trading off a more famous mark
• Is a surname
• Is functional for the goods or services
• Is geographically descriptive
• Wrongfully registered because the trademark was never used in commerce (in this case, the registered trademark’s owner must have used falsified declarations of use or fake specimens)
• Is disparaging, scandalous, or immoral

How to Respond to a Petition to Cancel Your Trademark Registration

The first indication a trademark owner will have that a petition to cancel has been filed against their registered trademark is likely to be a Notice of Institution that includes a copy of the petition. They will then have 40 days to respond or the TTAB will issue a Notice of Default. This Notice of Default gives the individual or business 30 days to respond. If there is no answer to either of those notices, the TTAB will likely issue a default judgment in favor of the petitioner and cancel the trademark. This is why it is critical to respond as quickly as possible. A trademark attorney at Sullivan & Carter, LLP might be able to help you craft and file your answer.

Answers must be filed online through the TTAB’s Electronic System for Trademark Trials and Appeals (ESTTA). At the bottom of the page, under the “File Documents in a Board Proceeding” option, choose the general filing option and enter the Cancellation number found on the petition to cancel. ESTTA will then walk the individual through the process of filing their answer. Once the answer is filed in ESTTA, a copy must be served on the petitioner.

Accurately Completing Your Answer to the Petition to Cancel

The TTAB Manual of Procedure (TBMP) provides all the requirements and rules for filing an answer, and individuals must follow these rules precisely. The answer should include a specific response to each petition claim in numeric order corresponding to the petition’s paragraphs. The individual must admit or deny each claim and offer a legal defense against all the allegations. The individual should not include evidence or arguments refuting the claim. They should stick strictly to the facts of the case to avoid including anything the TTAB may deem unnecessary or inadmissible.

The individual can file a counterclaim to cancel the petitioner’s trademarks as part of their answer. However, it is important to note that filing just the answer will not incur any filing fees. Filing a counterclaim will require paying the appropriate filing fees. The individual will also be required to satisfy all the initial pleading requirements associated with canceling a petition if they wish to file a counterclaim.

Other Important Information About Trademark Cancellation Petitions

While a petition to cancel is similar to a civil lawsuit, it is not exactly the same. Unlike a court case, where a judge may determine whether there are monetary damages or issue punitive measures, the TTAB will only determine whether the mark should be canceled and the owner stripped of their rights. Regardless of the outcome, neither party will receive any monetary damages or punitive measures, including having their attorney’s fees paid.

While the process of determining whether to cancel the trademark can take between 30 to 36 months to complete, individuals will not be required to attend any in-person hearings to address it. The entire process is handled digitally with occasional phone conferences with the TTAB attorney assigned to the case. In very rare instances, the TTAB may request oral hearings from the parties, which will also typically be handled by phone.

How Can a Chicago Trademark Attorney Assist You?

While it can be scary to learn that someone is trying to cancel your trademark, it is important to remain calm and consider consulting with an attorney. A petition to cancel is not a guarantee that your trademark registration will be canceled. With a proper and timely filed answer and strong evidence, your trademark rights may be safe. If your trademark is under attack or you are concerned about protecting your trademark rights, an experienced Chicago trademark attorney with Sullivan & Carter, LLP may assist you. Call (929) 724-7529 to schedule your consultation and learn more about your rights and how to protect them.