How to file a Petition To Cancel Trademark before TTAB?

September 26th, 2013

trademark TTABQuestion: How do I cancel someone else’s registered trademark?

Answer: You can file a petition to cancel before the Trademark Trial & Appeal Board.

Trademark Trial and Appeal Board (TTAB) – United States Patent …   www.uspto.gov/trademarks/process/appeal/

 A petition to cancel essentially an arbitration proceeding. TTAB has jurisdiction and authority. Service the federal court. You can either litigate the validity of a registered trademark before the trademark trial and appeal Board or in a federal court with jurisdiction. An experienced  trademark attorney can help you decide which forum is best for your specific trademark issue.

Aug 12, 2013 – Trademark Trial and Appeal Board:  The grounds for cancellation are as follows:

- Immoral or scandalous matter. Trademark Act section 2(a)
- Deceptiveness. Trademark Act section 2(a)
- False suggestion of a connection. Trademark Act section 2(a)
- Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods. Uruguay Round Agreements Act section 2(9)
- Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof. Trademark Act section 2(b)
- Consists of or comprises a name, portrait, or signature of a living individual without written consent, or the name, portrait, or signature of a deceased president without the written consent of the surviving spouse. Trademark Act section 2(c)
- The mark comprises matter that, as a whole, is functional. Trademark Act section 2(e)(5)
- Fraud. Torres v. Cantine Torresella S.r.l. 808 F.2d 46, 1 USPQ2d 1483 (Fed. Cir. 1986)
- Genericness. Trademark Act section 23
- Abandonment. Trademark Act section 14
- Violates the provisions of Trademark Act § 4. Trademark Act § 4 (collective and certification marks)
- The registration is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.. Trademark Act section 14
- Priority and likelihood of confusion. Trademark Act section 2(d)
- The mark is merely descriptive. Trademark Act section 2(e)(1)
- The mark is deceptively misdescriptive. Trademark Act section 2(e)(1)
- The mark is primarily geographically descriptive. Trademark Act section 2(e)(2)
- The mark is primarily geographically deceptively misdescriptive. Trademark Act section 2(e)(3)
- The mark is primarily merely a surname. Trademark Act section 2(e)(4)
- Dilution. Trademark Act section 43(c)

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One Response to “How to file a Petition To Cancel Trademark before TTAB?”

  1. admin says:

    As an Internet and trademark specialist, I have to tell you that it is extremely common for someone to make it to the trademark registration process and still be violating the trademark rights of someone else. Just because the examining attorney at the US PTO allows a trademark registration to occur, doesn’t mean that that trademark owner wins. Trademark rights are established by being the 1st to use the Mark in commerce. The 1st to use the Mark is the 1st one to have rights and is the one who should win.

    So would you do if a third-party is infringing your trademark or service mark but has already received registration? What if that third-party has a registered trademark and you only have common law trademark rights? Trademark attorney will tell you that the answer is to file a petition to cancel with the trademark trial and appeal Board. This is a body with in the US trademark office with the jurisdiction and authority to decide whether or not a trademark should be canceled after registration. If you need to find out how to file a petition to cancel, give us a call and we’ll bring you up to speed.

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