The Basics of TTAB Cancellations


TTAB Cancellation Actions: Terminating an Infringing Trademark Registration

You learn that another person or entity has a registered trademark at the United States Patent and Trademark Office (the "USPTO") that is similar to your trademark, is a generic or descriptive term you believe should not be "owned" by one party, is a mark that has been abandoned (or perhaps never used), or is a mark that was secured by fraudulent representations to the USPTO. What can you do?

One option is to institute a cancellation action with the Trademark Trial and Appeal Board (the "TTAB") to challenge the registration of the mark. A cancellation action is a specialized proceeding in which the TTAB determines whether your opponent's trademark violates your trademark rights. If you win, the TTAB "cancels" the registration of the trademark at issue.

A cancellation action at the TTAB is different from other types of proceedings in several ways. Below are some examples and other information that may help you determine whether a cancellation could be a good option for you.

Cancellation Procedure

The plaintiff in a cancellation action is known as the "petitioner." The defendant is called the "respondent." A petitioner commences a cancellation action by filing a "Petition for Cancellation" with the required fee.

After the Petition for Cancellation is filed, the respondent files an Answer in response to the Petition for Cancellation. The Answer responds to the allegations in the Petition for Cancellation and typically explains why the trademark registration is valid and should not be cancelled, and it may also include affirmative defenses and/or counterclaims (e.g., seeking to cancel any mark that the petitioner asserts in the Petition for Cancellation.)

The time for filing a cancellation action varies depending on the case. Typically, a cancellation can be filed within five years of the mark's registration date (i.e., the date the registration issued). 15 U.S.C. § 1064. This includes cancellation actions asserting a likelihood of confusion with a prior used and/or registered mark. On the other hand, a cancellation action may be filed outside this window in some circumstances, such as where the challenged registration is on the Supplemental Register or where the petitioner alleges genericness, functionality, abandonment, fraud, misrepresentation of source, or the bars to registration in Trademark Act Sections 2(a)-(c), 15 U.S.C. §§ 1052(a)-(c).

Cancellations vs. Oppositions

As explained in our prior blog post, a TTAB opposition is a specialized proceeding where the TTAB determines whether your opponent's trademark application is eligible for registration and/or violates your trademark rights and may refuse the application.

A cancellation is different because it involves a registered mark. If the TTAB finds that the registered mark violates your trademark rights or is otherwise not entitled to registration, the TTAB will cancel the challenged registration. Thus, cancellations are an option to object to the registration of a mark where you did not file an opposition while your opponent's application was pending, or where other facts relevant to the registrability come to light after registration.

That said, cancellations and oppositions are similar in many ways. For example, common law rights can be asserted in both. They are each decided by TTAB judges. Procedure is primarily determined by the Trademark Trial and Appeal Board Manual of Procedure (the "TBMP"). Cancellations and oppositions can be appealed to the Federal Circuit, with legal issues being reviewed de novo and factual issues being reviewed under substantial evidence. Neither proceeding will result in damages or an injunction, unlike district court proceedings.

One interesting fact is that oppositions are significantly more common at the TTAB. The TTAB reports that 2,400 cancellations were filed at USPTO in 2021. On the other hand, the TTAB reports that 6,669 oppositions were filed in 2021. Id.

Parallel Cancellation and District Court Proceedings

Since cancellation proceedings involve registered marks, there may be an increased likelihood that the mark has already been used in commerce and thus is subject to district court litigation. In this situation, there may be concurrent actions: a district court action (filed by the mark owner) and a TTAB cancellation (filed by the district court defendant).

Overlapping proceedings may lead to disputes, such as whether issues raised and decided in one of the proceedings lead to estoppel, preclusion, or persuasive authority. See Int'l Watchman Inc. v. Barton Watchbands Holdco, LLC, No. 1:19-CV-2310, 2021 WL 855119, at *5 (N.D. Ohio Mar. 8, 2021) (discussing the potential "persuasive authority" that may result from a concurrent cancellation proceeding); Beasley v. Howard, 14 F.4th 226 (3d Cir. 2021) (discussing issue and claim preclusion and cancellation proceedings). Indeed, the Supreme Court has explicitly held that "a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met." B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 141—42; see also TBMP 510.02(a).

It is often the case that one of the parties to co-pending proceedings at the TTAB and in district court involving the same registration will seek to stay the cancellation action in the TTAB pending the resolution of the district court action. The TTAB has discretion about whether to stay the action, but a stay will often be granted in the interest of judicial economy if the district court action involves matters beyond the right to registration. See TBMP 501.02(a) and 37 C.F.R. §2.117(a).

Alternatively, it is possible that one party (likely the district court defendant) may seek to stay the district court case pending the outcome of the TTAB cancellation action. For example, a Northern District of Ohio court recently considered whether to stay a district court proceeding due to a pending cancellation proceeding. Int'l Watchman Inc., 2021 WL 855119. The court denied the stay after considering whether a stay would "serve judicial efficiency" and "harm or unfairly prejudice" the plaintiff, and whether denying the stay would cause the defendant to "suffer hardship or inequity."

Regarding judicial efficiency, the court held the fact that the district court proceeding was "in the early stages of litigation [] weigh[ed] in favor of a stay." The court also held that the cancellation proceeding would "not necessarily simplify the issues in this case" because the cancellation determination would be appealable and because "the validity of a mark and whether that mark was infringed upon are different issues, meaning that resolution of validity by the TTAB may not resolve the infringement issue here."

Regarding harm to the plaintiff, the court found that a stay would harm plaintiff "to some degree" because "[t]his lawsuit is [p]laintiff's means to enforce and protect the mark" and a stay would delay plaintiff's potential relief.

Regarding hardship to the defendant, the court held that "having to participate in a lawsuit as a named party does not constitute sufficient hardship or inequity to merit a stay." The court also found it relevant that a third party, not the defendant, filed the cancellation proceeding, which meant that the defendant was "spared the risk of simultaneous litigation."

TTAB cancellation actions can be a good option to enforce your trademark rights and cancel an opponent's registration, but there are many factors to consider.