Remember, your personal information becomes public in Trademark systems. How does one go about cancelling a trademark? There are multiple ways to cancel a trademark and subsequently, there are multiple options to exercise once a trademark has been. The TTAB requires that respondents answer online through their ESTTA system. In general, an answer should include a specific response to each of the claims in the petition and be formatted in numeric order that corresponds with the Petitions paragraphs. The mark is trading off of a famous mark. If you file your petition more than five years after the registration date, you can only request cancellation on the ground that the trademark has become generic. On the other hand, if the TTAB rules in favor of the petitioner, the worst that can happen is a canceled trademark registration. A Notice of Opposition, or an extension of time to oppose, must be filed within 30 days of publication. ATTORNEY ADVERTISING, Conference, Discovery, Disclosure, and Trial Schedule. The goods and services in the new application must be identical to, or narrower than, the goods and services in the canceled or expired registration. When to file: File after a USPTO Reference Number has been assigned to the International Application. Under no circumstances can the TTAB award any type of monetary damages, attorneys fees, or other financial compensation to either party. However, if neither Notice receives a response, a default judgment will likely be entered in favor of the petitioner, and the trademark in question will be Cancelled. When to file: File after your application has been approved for publication, but before a Notice of Allowance has been issued. Specific grounds that petitioners can claim even after five years have passed since registration include: If a trademark owner finds out about a trademark application that will be damaging to their existing mark, they do not need to wait for registration to oppose it. When to file: File after your trademark has registered. Resource: Changing application information after publication, TMEP section 1505, Form: Petition to Director Form: Petition to Revive Abandoned Application - Failure to Respond Timely to Office Action. Choosing your ESTTA form | USPTO When to file:File no later than two months after the issue date of your petition decision. Filing date: 05/07/2018 IN THE UNITED STATES PATENT AND TRADEMARK OFFICEBEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Petition for Cancellation Notice is hereby given that the following party has filed a petition to cancel the registration indicated below. However, while the choice to hire a lawyer may exist for everyone else, many parties in Cancellation Proceedings choose to work with an experienced trademark attorney. For example, a typographical error in the applicants entity type. The most common way a petitioner can prove standing is by showing prior rights in a trademark that is the same or similar to the infringing registered mark. When to file: File no later than two months after the issue date of your Notice of Cancellation. If necessary, the schedule can be pretty easily changed through mutual agreement by the parties and approval by the TTAB. 2023 Revision Legal. In Step 3 of the form, select "Other" and enter "request jurisdiction be restored to examining attorney to review post publication amendment.". If there is pending litigation, a copy of the pleadings, If there is actual infringement, a copy of a cease-and-desist letter you sent to the infringing party, If you need a trademark registration to secure government approval for the goods or services, a copy of the regulation or an agency action requiring the trademark registration, A statement of relevant facts and the relief you are requesting, including a statement that the trademark can't be adequately depicted in a single view, A substitute drawing showing multiple renditions of the trademark, if you haven't already submitted one, That we forward an assignment (MM5) or security interest (MM19) to the International Bureau because you can't obtain the holders signature, A correction to the international application because of a USPTO or IB error, Withdrawal of the international application, Correction to the listing of designated countries, A statement of relevant facts and the relief you are requesting, such as the examples above, A statement of relevant facts and the relief you are requesting, Amend your trademark in a way that does not materially alter it, Correct an error in your application in limited circumstances, If your application currently includes a Section 1(b) basis, a clear statement of your intent, such as, Delete the 1(b) basis and substitute the 44(e) basis, Add a 44(e) basis and perfect the 1(b) basis by submitting a Statement of Use with your petition, Substitute the 44(e) basis but retain the 1(b) basis until the examining attorney approves the foreign registration, Unintentionally failed to submit a response to youroffice action on time, Unintentionally failed to respond to a suspension inquiry, Unintentionally missed the deadline to file a Statement of Use (SOU) or request for extension of time to file an SOU, Unintentionally missed the deadline to file a Statement of Use (SOU) or request for extension of time to file an SOU, or. Purpose: Request review of the denial of your petition to revive. Resource: Letter of protest practice tips, Form: Notice of Opposition Resource: Changing application information after publication, TMEP 806.04, Form: Petition to Change the Filing Basis After Publication. In step 3 of the form, select Request a waiver of fees for a federal government agency.. This Standard Document contains integrated drafting notes with important explanations and tips for investigating the relevant facts and drafting the allegations set out in the petition. Before a trademark is registered, parties have the opportunity to oppose the registration by filing a notice of opposition within a certain time frame. PDF Petition for Cancellation Requirements:Your petition must include: Form: Petition to Director for an International Application/Registration. All Rights Reserved. Filing an expungement petition would likely be less risky and more cost-effective than a full cancellation proceeding with the Trademark Trial and Appeal Board. When to file: File any time during the trademark process. Purpose: Request that we restore jurisdiction to the examining attorney to review an amendment submitted after approval for publication. Under the Lanham Act which is also referred to as the Trademark Act of 1946, parties that believe they may suffer damage due to a registered trademark have the ability to file a Petition to Cancel that registration with the U.S. Patent and Trademark Office (USPTO). Shortly after the petitioner files the petition for cancellation, the TTAB will institute the trademark cancellation by emailing the Notice of Institution to both parties. Purpose: Requestto abandon a Section 15 affidavit or the Section 15 portion of your combined declaration of use or excusable nonuse and affidavit of incontestability(Section 8 and 15, or Section 71 and 15). TTAB: Petition for Cancellation (Genericness and Descriptiveness) In step 3 of the form, select Redact information from public view.. The Definitive Guide to Trademark Expungement and Trademark If you haven't received a notice, file within two months of the date you learned of the notice, but no later than six months after the cancelation date in TSDR. For example, you can request: Requirements: Your petition must include: Use thePetition toDirectorform instead if you don't have a USPTO Reference Number. When to file: File before the pending application is published or up to 30 days after publication. (2) a merely descriptive, merely geographically descriptive mark, or a mark that is merely a surname; (3) a mark that falsely identifies the source of goods or services; (4) an absence of a bona fide use of defendants mark in commerce prior to the filing of the use-based application, or that there was no bona fide intent to use the mark when the applicant filed an Intent to Use application; (5) an abandonment of a mark of at least 3 years; (6) fraud having been committed in registering the mark; and. . Requirements: Your petition must include the petition fee, as well as evidence demonstrating the possibility of losing substantial trademark rights. The mark is merely descriptive or generic for the goods and services it is registered for, and, therefore, consumers would not recognize it as a brand. In step 3 of the form, select Reinstate a cancelled registration and accept a late response to an office action issued in connection with a Section 8 or 71 declaration.. First Use: 2001/10/24 First Use In Commerce: 2001/10/24 All goods and services in the class are cancelled, namely: CASINO SERVICES Grounds for Cancellation Torres v. Cantine Torresella S.r.l.Fraud 808 F.2d 46, 1 USPQ2d 1483 (Fed. When to file: File no later than two months after the issue date of the examiners amendment deleting the goods or services. A sample form that a trademark owner (petitioner) may use as a starting point for drafting a petition for cancellation to commence a cancellation proceeding before the Trademark Trial and Appeal Board (TTAB). CANCELLATION PETITION In the matter of trademark Registration No. Most often, a trademark registration is challenged on the basis that the trademark itself is no longer in use and has been abandoned. Form: Petition toDirector For example, trademark cancellations can be based on the petitioners ownership of prior rights in a confusingly similar trademark, or the petitioners belief that the registrants trademark is merely descriptive, generic, deceptive, has never been used in commerce, or is otherwise not entitled to registration on either the Principal Register or Supplemental Register. Aggressive Intellectual Property Litigators Trademark Attorneys Patent Lawyers Copyright Attorneys. An Answer to a Petition to Cancel does not require any new action or proceeding to be initiated, as it is merely a response to an already existing case. byPractical Law Intellectual Property & Technology. Filers should be prepared with the following: Filers should include a short, simple statement of the reason relief is sought, as well as the standing and legal grounds for Cancellation.