TRADEMARK CANCELLATIONS

When an infringing trademark has already registered with the USPTO, a cancellation proceeding before the Trademark Trial and Appeal Board can remove that registration and restore your exclusive rights. Yomtobian Law P.C. represents trademark owners in TTAB cancellation proceedings, challenging problematic registrations based on priority, likelihood of confusion, abandonment, fraud, and other grounds. Attorney Alan Yomtobian has extensive experience with trademark cancellations, helping clients eliminate conflicting registrations that threaten their brand rights.

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What Is a Trademark Cancellation?

A trademark cancellation is a TTAB proceeding seeking to cancel an existing trademark registration. Unlike oppositions which challenge applications before registration, cancellations target marks that have already registered. Cancellation is necessary when:

• A conflicting mark registered before you discovered it

• You didn't file a timely opposition during the publication period

• The registrant fraudulently obtained registration

• The registrant has abandoned the mark

• Circumstances have changed since registration

Cancellation proceedings are similar to oppositions in procedure—both involve pleadings, discovery, and briefing before the TTAB—but cancellations face additional procedural hurdles.

Grounds for Trademark Cancellation

The available grounds for cancellation depend on how long the mark has been registered:

Within Five Years of Registration (Any Ground)

During the first five years, you can seek cancellation based on any ground that would have prevented registration, including:

• Likelihood of Confusion - The mark is confusingly similar to your senior mark

• Descriptiveness - The mark is merely descriptive without acquired distinctiveness

• Genericness - The mark is the generic name for the goods/services

• Functionality - The mark is functional rather than ornamental

• False Suggestion of Connection - The mark falsely suggests a connection

• Fraud - The registrant made material false statements to the USPTO

After Five Years (Limited Grounds)

Once a registration becomes incontestable after five years, cancellation grounds are limited to:

• Abandonment - The registrant has stopped using the mark with intent not to resume

• Genericness - The mark has become generic

• Fraud - The registration was obtained fraudulently

• Improper Assignment - The mark was assigned without goodwill

• Functional Matter - The registered matter is functional

Incontestability substantially strengthens a registration, making early action important when you identify conflicting marks.

Our Trademark Cancellation Services

Yomtobian Law provides comprehensive cancellation services:

Cancellation Evaluation and Strategy

Before filing a cancellation petition, we thoroughly evaluate the merits. We analyze the registration's vulnerability, identify the strongest cancellation grounds, assess the registrant's likely defenses, and estimate costs versus benefits. We provide strategic advice about whether cancellation is the best approach or if alternative enforcement methods might be more effective.

Petition for Cancellation Preparation

If cancellation is warranted, we prepare and file a detailed Petition for Cancellation setting forth the grounds for cancellation with supporting facts. The petition must establish both standing (that you have a real interest in the proceeding) and grounds for cancellation.

TTAB Litigation Management

We handle all aspects of the cancellation proceeding:

• Answer Review - Analyzing registrant's answer and defenses

• Discovery - Conducting thorough discovery to develop evidence

• Depositions - Taking witness depositions to build your case

• Evidence Development - Gathering marketplace evidence, prior use evidence, and expert testimony

• Motion Practice - Filing summary judgment motions when appropriate

• Trial Submissions - Preparing comprehensive trial brief with evidence

• Appeal - Appealing adverse TTAB decisions to the Federal Circuit if necessary

Settlement and Licensing Negotiations

Many cancellation proceedings resolve through negotiated settlements. We pursue favorable resolutions including:

• Voluntary cancellation of the registration

• Amendments limiting the registration's scope

• Coexistence agreements defining non-conflicting use

• Licensing arrangements allowing both parties to use marks

• Monetary settlements compensating for your losses

Priority and Likelihood of Confusion

The most common cancellation ground is likelihood of confusion based on prior rights. If you can demonstrate superior rights to the mark (earlier first use or earlier application filing), and the registered mark is confusingly similar for related goods/services, you can cancel the registration. We develop evidence showing your priority, the similarity of the marks, and likelihood of confusion factors.

Abandonment Cancellations

If a registered mark is no longer in use, you may seek cancellation based on abandonment. The Lanham Act presumes abandonment after three consecutive years of non-use. We investigate the registrant's current use, gather evidence of non-use, and demonstrate the mark has been abandoned.

Fraud-Based Cancellations

If the registrant made knowingly false material statements to the USPTO—such as falsely claiming use when the mark wasn't actually used—the registration can be cancelled for fraud. Fraud cancellations are powerful but require clear and convincing evidence of the registrant's fraudulent intent.

Defending Cancellation Proceedings

Yomtobian Law also defends trademark registrations facing cancellation. If your registration has been challenged, we develop robust defenses to maintain your registration rights.

Remove Problematic Registrations

Don't let an infringing registration limit your trademark rights. Cancellation proceedings can eliminate conflicting registrations and restore your exclusive position in the marketplace.

Contact Us About Trademark Cancellation

If an existing trademark registration conflicts with your rights, contact Yomtobian Law P.C. Attorney Alan Yomtobian will evaluate cancellation options and, if appropriate, initiate proceedings to remove the conflicting registration.

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