Trademark cancellation: Challenge someone else's registration you believe is invalid. Grounds include abandonment (3+ years non-use), genericness, fraud, or likelihood of confusion with your prior mark. Success rate: 45-55% depending on grounds. Cost: $50,000-150,000 through TTAB trial.
When to Cancel
Blocking registration: Someone registered mark that blocks your use or registration. You need it gone. Can't coexist. Cancellation clears path for your brand.
Enforcement defense: You're accused of infringement. Cancelling accuser's registration eliminates their rights. Offensive defense strategy. Turn tables on plaintiff.
Abandonment Ground
Non-use: Mark not used in commerce for 3+ consecutive years (US). Creates presumption of abandonment. Most common cancellation ground. Requires evidence of non-use.
Evidence gathering: Search for products bearing mark. Check website archives. Review marketplace listings. Document absence of commercial use. Hire investigator if needed.
Intent element: Non-use plus intent not to resume. Three years creates presumption, but registrant can rebut with evidence of plans to resume. Contested cases turn on intent evidence.
Genericness Ground
Lost distinctiveness: Mark became common name for product category. "Escalator," "thermos," "aspirin" lost protection through genericide. Public uses mark as noun, not brand.
Evidence: Dictionary definitions. Media usage. Consumer surveys showing public treats mark as generic term. Challenging to prove - requires substantial evidence of generic usage.
Fraud Ground
Material misrepresentation: Registrant lied to USPTO. Claimed use when not using. False declaration of ownership. Knowing false statement material to registration.
High bar: Must prove intentional deception, not just mistake. Fraud claims frequently fail because intent hard to prove. Use only when clear evidence exists.
Likelihood of Confusion
Prior rights: Your mark predates their registration. Marks confusingly similar. They shouldn't have been registered given your prior use. Challenge based on your superior rights.
DuPont factors: TTAB applies 13-factor test weighing similarity of marks, goods, trade channels, consumer sophistication, etc. Same analysis as infringement likelihood.
Filing the Petition
Standing required: Must have real interest in proceeding - not just anyone can file. Competitor, prior user, applicant blocked by registration. Demonstrate legitimate stake.
TTAB proceedings: Trademark Trial and Appeal Board handles cancellations. Administrative proceeding, not court. Discovery, briefs, oral argument. 18-24 months typical duration.
Discovery Phase
Written discovery: Interrogatories, document requests, admission requests. Learn what evidence registrant has supporting validity. Build your case for trial.
Depositions: Oral examination of registrant's witnesses. Often dispositive - witness admissions can make or break case. Expensive but valuable.
Settlement Negotiations
Most cases settle: 70%+ resolve before trial. Consent agreement, coexistence terms, voluntary cancellation. Litigation is expensive - both sides prefer negotiated resolution.
Assignment option: Registrant transfers mark to you instead of cancellation. You acquire registration rather than just eliminating it. Sometimes more valuable than naked cancellation.
Trial and Decision
Paper trial: No live witnesses - testimony via deposition transcripts and declarations. Written briefs. Oral argument optional. Different from courtroom experience.
Appeal rights: Losing party can appeal to Federal Circuit. Further delays final resolution. Consider appeal likelihood when evaluating settlement offers.
International Cancellation
Country-specific: Each jurisdiction has own cancellation procedure. EU has EUIPO cancellation division. UK has UKIPO. Procedures, grounds, timelines vary.
Coordination: Multi-country cancellation campaigns require coordinating parallel proceedings. Local counsel in each jurisdiction. Complex project management.
Post-Cancellation
Registration void: Cancelled registration treated as never existed for priority purposes. Your path now clear. But prior common law rights may survive - registration gone, not necessarily all rights.
File your application: Once blocking registration cancelled, file your own application. Establish your rights officially. Don't assume cancellation automatically grants you rights.
Alternative Strategies
Coexistence: Cheaper than cancellation. Negotiate agreement defining boundaries. Both parties keep registrations. Avoid conflict without eliminating either mark.
Acquisition: Buy the registration instead of cancelling it. May be cheaper than litigation. Convert blocker into asset. Explore purchase before filing petition.
Trademark Lens checks availability before you file - identify potential conflicts early, avoiding situation where you need expensive cancellation proceedings later.