Trademark cancellations are legal proceedings in which a party seeks to cancel a registered trademark. A trademark cancellation proceeding can be initiated by either the owner of the trademark or a third party who believes that the trademark should not have been granted registration.
If a trademark is cancelled, it is removed from the trademark registry and the owner of the trademark loses their exclusive rights to use the trademark. Cancelling a trademark can have significant consequences for the owner of the trademark, as it can result in a loss of valuable brand recognition and damage to the company’s reputation.
There are several grounds on which a trademark may be cancelled, including:
The trademark was not eligible for registration in the first place, such as because it is too similar to an existing trademark, it is not distinctive, or it is too similar to a generic term.
The trademark was abandoned, which means that the owner stopped using the trademark without intending to resume use in the future.
The trademark was used in a manner that would cause confusion with another trademark, i.e., likelihood of confusion.
The trademark is being used in a manner that is contrary to public policy, such as if the trademark is being used to promote illegal activities.
In a trademark cancellation proceeding, likelihood of confusion is a key factor that is considered in determining whether a trademark registration should be cancelled. To prove likelihood of confusion, the following requirements must typically be met:
Similarity of the marks: The trademarks in question must be similar enough such that consumers are likely to be confused about the source of the goods or services. This is typically evaluated by considering factors such as the similarity of the marks, the relatedness of the goods or services, and the sophistication of the consumers.
Similarity of the goods or services: The goods or services associated with the trademarks must be related or similar enough such that consumers are likely to believe that they come from the same source.
Evidence of actual confusion: The party seeking cancellation must provide evidence that consumers have actually been confused by the use of the trademarks, such as surveys, customer complaints, or market research.
Rebuttable presumption: In some jurisdictions, there may be a rebuttable presumption of likelihood of confusion if the trademarks are highly similar and the goods or services are related. In such cases, the trademark owner must provide evidence to rebut the presumption, such as evidence of long-standing, concurrent use of the marks, or evidence of a lack of actual confusion.
In trademark cancellation proceedings, to prove that a trademark has been abandoned, the following requirements must typically be met:
Non-use: The trademark owner must have discontinued the use of the trademark in commerce for an extended period of time, usually 3 consecutive years.
Intent not to use: The trademark owner must have demonstrated an intention not to use the trademark in the future, such as by abandoning the trademark registration or failing to respond to communications about the trademark.
Lack of enforcement: The trademark owner must have failed to enforce their trademark rights against others using a similar mark, such as by failing to take legal action against infringing uses.
Evidence: The party claiming abandonment must provide evidence to support their claim, such as sales data, advertising materials, or legal documents.
In a trademark cancellation proceeding, the burden of proof for non-use is on the party seeking to cancel the trademark. To prove non-use, the following requirements must typically be met:
Length of non-use: The trademark owner must have discontinued the use of the trademark in commerce for an extended period of time, usually 3 consecutive years.
Evidence of non-use: The party seeking cancellation must provide evidence to support their claim of non-use, such as sales data, advertising materials, or legal documents.
Relevant time period: The evidence must cover the relevant time period for the non-use, which is typically the 3 years immediately preceding the filing of the cancellation action.
Commercial use: The trademark must have been used in commerce, which means that it must have been used in connection with the sale of goods or services. Use of the trademark in advertising or promotional materials alone is not enough to demonstrate commercial use.
Exception for excusable non-use: The trademark owner may be able to defend against a claim of non-use if they can show that there was a legitimate reason for the non-use, such as a period of economic hardship, the unavailability of a particular product, or a change in marketing strategy.
It’s worth noting that abandonment, non-use and likelihood of confusion are legal concepts and can be difficult to prove, and that the specific requirements can vary depending on the jurisdiction and the specific facts of the case. If you’re in doubt, it’s always a good idea to consult a qualified attorney who can help you evaluate your specific situation.
The procedure for trademark cancellation typically involves the following steps:
Filing a petition: The first step in a trademark cancellation proceeding is to file a petition with the appropriate forum, such as the Trademark Trial and Appeal Board (TTAB) or a federal district court. The petition must set forth the grounds for cancellation, such as abandonment, non-use, or a likelihood of confusion with another trademark.
Service of the petition: The petitioner must serve the trademark owner with a copy of the petition, which initiates the cancellation proceeding.
Response to the petition: The trademark owner has an opportunity to respond to the petition and to raise any defenses to the cancellation.
Discovery: Both parties may engage in discovery, which is the process of obtaining evidence from the other party and from third parties.
Hearing: The case may proceed to a hearing, where both parties can present evidence and testimony to support their positions.
Decision: After the hearing, the TTAB or the court will issue a decision on the cancellation, which may be appealed to a higher court if necessary.
Trademark cancellations can be complex legal proceedings and it is important to seek legal advice from an experienced attorney if you are facing a trademark cancellation action or if you are considering initiating a trademark cancellation proceeding.
