How Do You Cancel Someone Else's Trademark Registration?

A registration that blocks your application, or that someone is waving at you in a demand letter, is not necessarily permanent. Our main copyright and trademark law page explains what registration gives an owner; this page covers the three ways to take it away: a cancellation proceeding at the Board, the USPTO's nonuse proceedings, and a court order. The starting point is the statute: "any person who believes that he is or will be damaged" by a registration may petition to cancel it, within the time limits set for each ground (15 U.S.C. 1064).

How Cancellation Works, Step by Step

1. Pull the registration in TSDR. Note the registration date, the filing basis, the goods or services, and any Section 15 declaration.
2. Pick the ground. Match your facts to a ground the statute allows at the registration's age (see the table below).
3. Choose the forum. A Board cancellation for most grounds; an expungement or reexamination petition for pure nonuse; a court if you are already litigating.
4. File the petition. A petition to cancel is filed through the Board's ESTTA system with the fee for each class (37 CFR 2.111).
5. The Board institutes the case. It sends a notice setting an answer deadline at least 30 days out (37 CFR 2.113(a)).
6. Discovery and trial. The Board sets a discovery conference and a 180-day discovery period (37 CFR 2.120), then trial periods for testimony and briefs.
7. Decision or settlement. The Board decides the right to the registration, or the parties settle.

Who Can File a Petition to Cancel?

Anyone who can show what the Board now calls an "entitlement to a statutory cause of action," formerly called standing. The Board's manual says a petitioner must show an interest within the zone of interests the statute protects, that is, a "real interest" in the outcome, and damage proximately caused by the registration, meaning a reasonable basis for its belief in damage (TBMP 303.03, 309.03(b)). The manual's examples include a business whose application was refused because of the registration, and a party the registrant has accused of likelihood of confusion in another proceeding between them.

The USPTO's nonuse proceedings are open more widely. The USPTO says any person may file an expungement or reexamination petition, and in most cases the real party in interest can remain anonymous; the petitioner is not a party to the proceeding.

Why Does the Five-Year Mark Matter So Much?

Because it closes most doors. A petition may be filed on any ground "within five years from the date of the registration" (15 U.S.C. 1064(1)). The Board's manual explains that within that window, a petition may rely on any ground that could have prevented registration in the first place, including likelihood of confusion under Section 2(d), descriptiveness, surname and geographic grounds, the claim that the registrant does not own the mark, and the absence of bona fide use for a use-based registration (TBMP 307.02(a)). After five years, a petition must recite one of the grounds in 1064(3), (5) or (6), and "a petitioner may not seek to cancel a Principal Register registration over five years old on the ground of likelihood of confusion."

The five-year limit works on its own clock. The manual notes it "is not dependent on the filing of a declaration under Section 15" (TBMP 307.02(b)), so a registration older than five years is protected from a confusion claim even if the owner never filed for incontestable status. Incontestability matters more in court, where it makes the registration conclusive evidence of validity and ownership, subject to the defenses in 15 U.S.C. 1115(b), as our page on answering a trademark cease and desist letter explains. One partial route survives the five years: the Board can restrict the goods or services in an older registration to avoid a likelihood of confusion, under 15 U.S.C. 1068 (TBMP 307.02(a)).

Which Grounds Are Available at Any Time?

Section 1064(3) allows a petition "at any time" if the mark has become generic for the goods or services, or a portion of them, is functional, has been abandoned, or its registration "was obtained fraudulently," among other grounds. Two of those come up most:

• Abandonment. A mark is abandoned when its use has been discontinued with intent not to resume, and nonuse for three consecutive years is prima facie evidence of abandonment (15 U.S.C. 1127). Our page on losing a trademark through nonuse covers how it is proved.
• Fraud. Fraud in procuring the registration, or during prosecution of the application, is a listed ground (TBMP 309.03(c)). Deliberate misuse of the registration symbol to deceive is a separate listed ground; our page on the TM and registered symbols explains that rule.

There is also a never-used ground: after three years from registration, a petition may target goods or services on which the mark "has never been used in commerce" (15 U.S.C. 1064(6)). That ground overlaps with the USPTO's expungement proceeding, which the same registration can face alongside a Board case, according to the USPTO.

How Do Expungement and Reexamination Work?

They are USPTO examination proceedings, not trials. Expungement targets goods or services on which the mark "has never been used in commerce" (15 U.S.C. 1066a(a)) and can be requested between three and ten years after registration. Reexamination targets a mark that was not in use on or before the relevant date: the filing date for an application filed and kept on a use basis, or, for an intent-to-use application, the date an amendment to allege use was filed or the statement of use period expired, including extensions. It must be requested within five years after registration (15 U.S.C. 1066b(b), (i)). The USPTO says Madrid-based registrations can only be challenged by expungement, and reexamination applies only to Section 1 registrations.

The petition must identify the registration and each good or service, and include a verified statement describing the reasonable investigation the petitioner conducted, plus supporting evidence and the fee (1066a(b); 1066b(c)). The Director decides whether the petition makes a prima facie case and, if so, institutes the proceeding; that decision is final and non-reviewable (1066a(c)). The USPTO's comparison: $400 per class, roughly 4.5 to 12 months depending on volume, limited to nonuse evidence, against $600 per class and from four months to up to three years for a Board trial case. If the petition succeeds, the USPTO deletes the goods or services at issue.

What Happens in a Board Cancellation?

It runs much like a trademark opposition, with the registrant as respondent. The petition goes to the Board through ESTTA with $600 for each class (37 CFR 2.111). The Board sends a notice of institution with an answer deadline of at least 30 days (2.113(a)), then sets a discovery conference and a 180-day discovery period (2.120), followed by trial periods. The Board decides only the right to the registration, not infringement or damages (TBMP 102.01). Our page on what happens in a TTAB opposition walks through the stages, which work the same way.

The USPTO notes that if the registrant defaults, $200 of the $600 fee is refunded. If a related civil action is pending, the Board may suspend the cancellation until the court case ends (37 CFR 2.117(a)). And a respondent cannot simply surrender the registration to escape a pending case: if it does so without the petitioner's written consent, judgment is entered against it (37 CFR 2.134(a)).

Can the Dispute Settle, or Go to Court?

Yes to both. A cancellation can also end in agreement: the registrant may narrow its goods, consent to your registration, or agree to coexist. Our page on trademark coexistence and consent agreements explains what those contain and how the USPTO treats them.

A court can also cancel. In any action involving a registered mark, the court may "order the cancelation of registrations, in whole or in part" (15 U.S.C. 1119), so a defendant sued for infringement can counterclaim for cancellation. Our page on trademark lawsuits in Atlanta federal court covers that setting. If the problem is still only an application, it is not too late to stop it before registration; see our page on letters of protest. Our page on what to do when someone files for your brand covers the other options.

What Changes the Answer

• The registration's age. Under five years, a confusion claim is open; over five, it is not (TBMP 307.02(a)).
• Your own priority. A confusion-based petition rests on your earlier rights: a registered mark, or a mark or trade name previously used in the United States and not abandoned (TBMP 309.03(c), quoting 15 U.S.C. 1052(d)).
• Whether the mark was ever used. Never-used goods point to expungement or 1064(6); use that later stopped points to abandonment.
• The filing basis. Reexamination is only for Section 1 registrations; Madrid registrations can only be expunged (USPTO).
• A pending lawsuit. Cancellation can be sought in court (1119), and a Board case may be suspended (2.117(a)).
• Budget and time. Expungement and reexamination cost $400 per class; a Board case costs $600 per class, plus the cost of discovery and trial.

A Worked Example

Common Mistakes

• Missing the five-year date. After five years, a confusion claim is gone (TBMP 307.02(a)).
• Assuming no Section 15 declaration means no deadline. The five-year limit runs regardless (TBMP 307.02(b)).
• Filing for expungement on goods that were used and then dropped. That is abandonment, a Board ground, not "never used."
• Skipping the investigation record. Expungement and reexamination petitions need a verified statement of the reasonable investigation (1066a(b); 1066b(c)).
• Pleading fraud without facts. It is a serious charge; build the evidence first.
• Forgetting the court option. If you are sued, a cancellation counterclaim may belong in that case (1119).

What to Do This Week

1. Pull the registration in TSDR and note the registration date and filing basis.
2. Calculate the five-year date and the three- and ten-year expungement window.
3. Document your own first use with dated records.
4. Investigate the registrant's use: website, stores, social media, packaging, with dates and screenshots.
5. Decide between a Board petition, an expungement or reexamination petition, or both.
6. Budget per class for the forum you choose.

Frequently Asked Questions

Can You Cancel Only Some of the Goods in a Registration?

Yes. A petition may seek cancellation "in whole or in part" (37 CFR 2.111(b)), and expungement and reexamination are decided good by good (1066a(c)).

Do You Have to Reveal Who You Are?

In a Board case, yes; you are the petitioner. For expungement and reexamination, the USPTO says the real party in interest can, in most cases, remain anonymous.

Can a Registration Over Five Years Old Ever Be Cancelled for Confusion?

Not on that ground alone. The Board may restrict its goods or services to avoid confusion under 15 U.S.C. 1068, and the any-time grounds, such as abandonment or fraud, remain available (TBMP 307.02(a)).

What Does a Petition to Cancel Cost?

$600 per class at the Board, with $200 refunded if the registrant defaults; $400 per class for expungement or reexamination. Our page on what a federal trademark costs lists the related fees.

How Long Does Cancellation Take?

The USPTO puts Board trial cases at four months to up to three years, and expungement or reexamination at about 4.5 to 12 months, depending on volume.

Does the Board Award Damages?

No. It decides only the right to register, not infringement or damages (TBMP 102.01). Money claims belong in court.

Zala IP Law prepares petitions to cancel, expungement and reexamination petitions, and settlement agreements for clients across the United States and internationally. If a registration stands in your way, request a consultation or call 404-313-1701, and have the registration number and your own first-use records ready.