Trademark Cancellation

Many healthcare companies believe that their U.S. trademark registrations are safe from trademark cancellation.  This can be a fatal mistake if you are not well-versed in trademark compliance law.

Trademark cancellation rules.  In the United States, trademark registrations enjoy a ten-year term, which can be renewed for additional ten (10) year periods upon a showing of use.  That being said, trademark registrations are subject to cancellation under the following conditions:

  1.  Administrative cancellation by the USPTO.   There are two times during the ten-year term that trademark owners must establish proof of either continuous use in commerce or excusable non-use.  These are between the fifth and sixth year post-registration and between the ninth and tenth year-post registration.  The failure to establish proof of use during these two statutory periods will result in your trademark registration being administratively cancelled by the U.S. Patent and Trademark Office.
  2.  Trademark cancellation by a third-party.   Any third-party who believes that it may be damaged by the continued registration of a trademark may seek to cancel the registration.  This is done by filing a petition for cancellation with the U.S. Trademark Trial and Appeal Board (“TTAB”).

How a cancellation proceeding works.   A trademark cancellation is a civil lawsuit filed before the U.S. Trademark Trial and Appeal Board (“TTAB”), the administrative body of the USPTO tasked with, among other things, adjudicating registration disputes between litigants.   Like other civil cases, trademark cancellation proceedings consist of three primary stages:  pleadings (which may include the petition for cancellation, answer, affirmative defenses, or counterclaims); discovery (which consists of interrogatories, requests for production of documents, admissions, and depositions); and trial.  Note that the TTAB’s jurisdiction applies to issues of registration only; it cannot order a party to cease using its trademark in commerce.  Nor can it award attorney’s fees and expenses.

Grounds for petition for cancellation.    A petition for cancellation of another party’s trademark registration may be filed on several grounds, including:

  • a likelihood of confusion with the Petitioner’s trademark;
  • abandonment of the trademark by the trademark owner through non-use;
  • that the Registrant’s mark is merely descriptive or has become generic
  • Registrant is not the rightful owner of the trademark
  • Registrant’s mark would dilute the distinctive quality of the Petitioner’s mark
  • Fraud on the USPTO

There are additional grounds for cancellation of a trademark registration.   One tactic that is being used more frequently by competitors is a petition for partial cancellation.  This is where the petitioner seeks to cancel entire classes of goods or services or specific goods and services from the trademark owner’s registration.

Trademark Cancellation Risk Compliance   To avoid your health trademark registrations from being cancelled, it is important to routinely file mandatory proof of continuous use with the USPTO.   This includes making sure that your company’s trademarks are still being used on all of the goods and services set forth in your trademark registrations.