How Do I Cancel an Infringing Trademark?

If you fail to object to an infringing trademark, the USPTO might consider your mark abandoned. This will cause you to lose your trademark and all associated protections.
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by | Last updated May 2, 2019 | Published on Jan 28, 2019 | Intellectual Property Law

You’ve taken the time, paid the fees, and have gone through all the steps to obtain a trademark for your business. You’re confidently marketing your company with its trademark, knowing that the public will recognize the mark and associate it with your business.

However, what happens if you find out that someone else has – either knowingly or unknowingly – registered a trademark very similar to yours?

That trademark is called an “infringing” trademark, and is something you’ll most certainly want to challenge.

Fortunately, there are a few steps you can take to cancel such an infringing mark.

What Counts as Trademark Infringement?

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If you want to take steps to cancel an infringing mark, you must first make sure that your mark meets certain requirements:

  • You must have registered your mark with the USPTO
  • You must currently own the mark and use it in the operation of your business (i.e. your mark isn’t considered “abandoned”).
  • Your mark must be “senior” to the other company’s mark, and you must have used that mark “in commerce” before the other mark.
  • The “infringing” company must be using the mark to sell goods or services in a market confusingly similar to your own.

Finally, the infringing mark doesn’t have to be registered to be considered infringing. The other company only has to use it in commerce in a way which creates consumer confusion in regards to your mark.

In this way, there are three main areas you should consider when deciding on whether or not to fight an infringing mark.

Likelihood of Confusion

Let’s say another company’s mark is similar to yours, and they’re selling some of the same (or similar) items or services. You can make the case that consumers are likely to assume that the products come from the same source.

This can be damaging to your company’s reputation, especially if the other company’s products are inferior or unsafe. Further, if you fail to take action against this other company, the U.S. Patent and Trademark Office might revoke your trademark entirely as an “abandoned” mark.

Dilution

Dilution goes along with likelihood of confusion.

If consumers mistakenly assume that your products are the same as another company’s, it may diminish the value of your product or service.

You don’t want the market to seem saturated with your product or service due to another company being confused with yours.

Objectionable Association

Just like you don’t want the public to confuse your mark with another, you definitely don’t want to be associated with a company with distasteful or objectionable products or advertising.

If you feel consumers may be confused by a similar mark and the infringing company has a questionable reputation, bring that up in your complaint.

Cancelling vs. Objecting to a Trademark

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The USPTO publishes all new trademark applications in the Trademark Official Gazette, a weekly newsletter which you can find on their site. If you see a trademark in the Gazette that you want to challenge, you can issue an objection within 30 days of the other trademark’s registration.

This process is called “objecting to a trademark,” and is an incredibly common proceeding.

Cancelling a trademark refers to revoking a trademark after it has already been registered. Generally, you have 5 years from the date a trademark was registered to petition to cancel it.

However, there are some cases where you can petition to cancel a trademark after 5 years, such as in the cases of a fraudulent filing or trademark abandonment.

Before you move forward to request a trademark cancellation, the USPTO recommends that you hire an experienced trademark attorney to advise you about the validity and strength of your claims.

Filing a Petition to Cancel

The first step to cancel a trademark is filing a petition to cancel. You’ll file this petition with the Trademark Trial and Appeal Board (TTAB), and you’ll have to pay a fee.

In your petition to cancel, you’ll state your grounds as well as any relevant or supporting information. You’ll also need to prove that you have prior rights to the trademark and that your company will be harmed if the other trademark continues to be used.

After you file your petition, the USPTO will assign a number to your case, and the TTAB will begin cancellation proceedings. They’ll notify both parties of the schedule and any deadlines. The schedule can be negotiated and changed as long as both parties agree.

Response

The defendant will need to respond to the petition within 40 days. In their response, they’ll likely deny the allegations of infringement. If they don’t respond in time, the TTAB will rule in your favor and the defendant’s trademark registration will automatically be cancelled.

If the other business responds, the TTAB will set up a settlement conference. This can be either a teleconference or a meeting held in person. In this conference, the attorneys will try to work out a settlement.

If they can’t reach a settlement, they will make a schedule for discovery and begin preparing for a trial.

Discovery Phase

“Discovery” means gathering information and evidence and presenting it to the TTAB. This is when each side makes their case.

Each side will make statements, ask questions, and respond to the other’s questions and requests. There are three different periods of testimony:

  • The company that submitted the new trademark will have 30 days to submit its trial evidence.
  • Afterwards, you will have 30 days to submit your own evidence.
  • Finally, the new company will have 15 days to rebut your evidence before the trial board.

Final Briefs

At the end of this process, each attorney will present their final evidence and briefs to the TTAB. Usually, this happens about 10 months after filing the original petition.

The defendant files a 60-page (maximum) brief, and the petitioner files a 55-page (maximum) brief. Then, the defendant has a chance to respond with another 15-page brief. These briefs are critical to the TTAB’s decision.

Trial and Final Decision

The TTAB will then use these final briefs and any testimony or evidence to decide the case. In some instances, either party can request an oral hearing.

Unlike a normal trial, this hearing would be before a three-person panel from the TTAB board.

It can take days, weeks, or even months for the TTAB to reach their decision.

The Outcome

It’s important to remember that for the defendant, the worst that can happen is their trademark registration will be cancelled. The TTAB will never award damages or any kind of financial compensation to anyone.

Some companies may choose to bring another civil suit related to trademark infringement, but that is not part of the trademark cancellation proceedings.

If the TTAB rules in favor of the petitioner, they will rule to cancel or greatly restrict the other company’s use of the trademark. On the other hand, if the TTAB rules in favor of the defendant each company will retain their trademark, with no restrictions or conditions.

Conclusion

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When you file a petition to cancel a trademark, you’ll have to prove that the other trademark is infringing on your brand and is causing, or has the potential to cause, damage to your business.

After you file, you’ll have the opportunity to settle the case with the other side before it goes to trial.

If the parties can’t agree on a settlement, the Trademark Trial and Appeal Board (TTAB) will decide your case. They may rule in favor of cancellation, or they may rule that the defendant can retain their trademark with no restrictions.

If you’re seeking to cancel a trademark, or if your company has received a petition to cancel, you’ll want to hire an experienced attorney as soon as possible. Trademark cases require specialized knowledge, and you’ll want a lawyer to advise you about the strength and validity of your case.

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Jacob Tingen

Jacob graduated from the University of Richmond School of Law and was accepted to the Virginia Bar in 2012. Less than 30 days after being admitted to the bar, Jacob launched his own legal practice. Read More.

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