Petitions to Cancel Registrations

As discussed in Chapter 4, one who believes that a mark applied for with the PTO will cause damage if it is allowed to proceed to registration may oppose registration of the mark. The notice of opposition must be filed within thirty days of publication of the mark in the Official Gazette. Because this time period is so limited, the Lanham Act also allows one to petition to cancel a registration issued by the PTO.

A petition to cancel is filed by one who believes that continued registration of a mark will cause harm to the petitioner. The grounds on which a registration may be canceled are those that would have prevented registration, including alleging that the mark is scandalous, it comprises a living person's name without consent, it is deceptive, and so forth. In general, however, the most common grounds alleged in petitions to cancel are that the mark is merely descriptive, it is confusingly similar to that of a prior user, or it has been abandoned. In many cases, petitions to cancel are filed by those wanting to eliminate a prior registration so that their applications may proceed to registration.

A petition to cancel a mark registered on the Supplemental Register may be filed at any time. A petition to cancel a mark registered on the Principal Register may be filed within five years after registration if the grounds are those that would have justified a denial of registration (such as that the mark is merely descriptive, is primarily merely a surname, and the like). After five years, a petition to cancel a mark registered on the Principal Register can be filed only on the grounds that the mark has become generic, the mark is functional, the registration was obtained through fraud, or the mark has been abandoned.

The cancellation proceeding is initiated by the filing of a petition to cancel, with the Trademark Trial and Appeal Board (TTAB) setting forth a short and plain statement of the petitioner's grounds for cancellation. The filing fee is $300 per class. The cancellation proceeds much like an opposition. The registrant responds to the petition, discovery is conducted, and written briefs are filed. The TTAB renders a decision. Most cancellation proceedings, like oppositions, are resolved by voluntary agreement between the parties.