Trademark Cancellation

A cancellation is a proceeding conducted before the Trademark Trial and Appeal Board (“the Board”) pursuant to Section 14 of the Lanham Act to determine whether a registered trademark or service mark should be cancelled because it will cause damage to any other person.  The cancellation must be initiated before the registered mark has achieved incontestable status based upon filing of the Section 15 Declaration.  The cancellation is initiated by filing a Petition for Cancellation with the Board, and payment of the associated fee.  The cancellation may be based upon any number of grounds, and typically is based upon prior use by the petitioner of the same mark for the same or related goods, or prior use of a similar mark. 

A cancellation is administrative litigation.  The Board will issue a trial schedule with deadlines for discovery, introduction of trial testimony, and filing of trial briefs.  Frequently the cancellation concludes with oral argument before the Board at its offices in Alexandria, Virginia.  Unlike typical litigation in federal court, the trial testimony is introduced through deposition as the Board does not hear live testimony.  Testimony may also be introduced by affidavit, stipulation and a notice of reliance, which is a mechanism to introduce typically documentary evidence.

After all briefing has been completed and oral argument held, the Board will issue a decision in which it will decide whether the registration should be cancelled.  The losing party has the right to appeal the Board’s decision to the courts, frequently to the Federal Circuit Court of Appeals. 

No registration can achieve incontestable status while a cancellation is pending. While the Board frequently sets a schedule setting a trial in the cancellation approximately two (2) years after filing, the cancellation frequently will take longer to reach conclusion.  Frequently the registrant and the petitioner will reach an amicable resolution of the matter, thus avoiding the need for the costs and delays attributable to the cancellation. 

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