question.jpgIn Trademarks

What is cancellation?

Cancellation occurs when a federally registered trademark has its registration canceled, such that it is no longer registered and anyone is entitled to use the mark and seek to establish their own rights in it. Within the first five years from when a mark was registered, a mark can be canceled for any reason which would have originally barred registration. For example, if the Patent and Trademark Office, in originally granting the trademark application, was unaware of a prior trademark registration which would have prevented this mark from being registered (because of a likelihood of confusion), this would be appropriate grounds for seeking cancellation within the first five years. Similarly, within the first five years the party seeking cancellation can argue that the trademark is merely descriptive (and thus, not capable of registration without secondary meaning) or that the mark is merely a surname.

However, once the mark has been registered for at least five years, this standard changes. From that time going forward, a trademark registration cannot be challenged for any reason which would have denied its original registration. Instead, a mark will only be canceled if it has been abandoned, if it is or has become generic, if it was fraudulently registered or if it is immoral, deceptive, scandalous or disparaging.