A cancellation proceeding occurs before the Trademark Trial & Appeal Board wherein one seeks to cancel an issued registration of a mark. A petition for cancellation may be filed (fee required) by any person who believes that he/she is or will be damaged by registration of the mark.
In the U.S. a petition to cancel a registration can only be filed for up to 5 years after the registration date, but only after a trademark has achieved registration on either the Principal or Supplemental Registers. Reasons to cancel the registered mark include:
- likelihood of confusion with petitioner’s previously used or registered mark;
- fraud;
- descriptiveness;
- its generic quality;
- abandonment; and
- misdescriptiveness & deceptiveness.
However unfair competition, trademark misuse, fair use, or anti-trust law violations are generally not considered valid grounds for cancellation.
If incontestability status has been successfully obtained after 5 years of registration, the mark cannot be canceled because the mark creates a likelihood of confusion with a prior-registered mark, or lacks distinctiveness. The mark can be canceled after 5 years on the basis of:
- forbidden mark;
- its generic quality;
- improperly used collective or certification mark;
- fraud;
- abandonment;
- the mark disparages or falsely suggests a connection with persons, institutions, beliefs or national symbols; or
- the mark is used to misrepresent the source of goods.