Petition to Cancel or Opposition?

Can you do both--an Opposition Proceeding and then a Cancellation Proceeding if the first (Opposition) does not succeed? Not unless there are significant facts that change. An applicant who survives an opposition is entitled to move forward with use and development of its mark, without fear that the Opposer could obtain a second bite at the apple based on immaterially changed transactional facts. Orouba Agrifoods Processing v. United Food Import (TTAB 2010).

The question of an Opposition or Cancellation Proceeding is often a matter of timing. There is a small window of opportunity to oppose a trademark application, during the 30 days after it has been published for opposition or the 30-90 days after publishing if an extension of time to oppose is filed by the party that is bringing the opposition (you cannot take advantage of someone else’s extension of time). (See TrademarkOppositionProcess.com for information on how to search for trademarks published for opposition.)

A Cancellation to contest a registered trademark can only be filed after a trademark application has issued into a trademark registration. If a Principal Registration is less than 5 years old, a longer list of grounds are available than after a Principal Registration is more than five years old and has become incontestable. A Supplemental Registration does not have this time limit and can be cancelled at any time. Note however that waiting a long time to try to cancel a mark may run into more issues of affirmative defenses. The current USPTO filing fee for a Petition to Cancel has the same $300 filing fee per class as a Notice of Opposition. A Petition to Cancel can also be brought as a Counterclaim (used as a defensive tool) by a defendant in an Opposition or Cancellation proceeding.



Can A Common Law Trade Name Be Used To Cancel A Federally Registered Trademark?

If you own a business and your business has earned goodwill with your customers that your customers associate with the name of your product or the name of your business,  someone may intentionally or unintentionally try to use your trademark or trade name as their own and may not choose to compensate you for taking it.

Trademarks that have been registered by the USPTO may be challenged for cancellation by anyone who has standing for a cancellation and grounds for a cancellation. Any ground that negates the registrant's right to registration may be raised for either opposition or cancellation.


The steps to successfully completing or defending from an Cancellation Proceeding are difficult and involve understanding NOT JUST trademark law but also federal court procedures for admitting evidence, understanding discovery and how it works and other knowledge.  Not Just Patents works with small business to protect trademark rights and works to defend these rights within small budgets. Corporate giants have the budgets to oppose and cancel but do not always have the facts on their side. Let us take a look at the facts and see if your business has to just give in or give up or if your business has a right to defend what you have worked for.


If you are just starting on obtaining a federal registration, we suggest our service and our method: Not Just Patents Five-Step Verification as part of a Plan for A Successful Trademark:

To Verify a potential trademark is strong, available to use, and ready to register, the process should be more than a direct hit federal search. To maximize the commercial strength and minimize the weaknesses of a trademark, a potential trademark user should:

1) Verify Inherent Strength,

2) Verify Right to Use,

3) Verify Right to Register,

 4) Verify the potential mark (as currently used) Functions As A Mark, and

5) Verify that the Goods and Services ID is both the correct and the maximum claim that are user can make and verify that the Goods and Services ID meets USPTO requirements before filing.

(*We don’t stop here but this is a good start. Call us if you want to plan for a strong mark.)


Call us at 1-651-500-7590 . We can help you go from wanting to protect your name to having a strong, legally protectable, successful trademark. If you have started to think of names or slogans that you would like to use, the timing is perfect to take all the right steps to file and protect your trademark. If you intend to use a name in the next year or so, the timing is perfect to plan the best way to protect that name and to reserve the name for future use.


© Not Just Patents LLC, PO Box 18716, Minneapolis, MN 55418, (651) 500-7590, WP@NJP.legal. This web site is for informational purposes only and is provided without warranties, express or implied, regarding the information's accuracy, timeliness, or completeness and does not constitute legal advice. No attorney/client relationship exists without a written contract between Not Just Patents LLC and its client. Privacy Policy Contact Us     See us at NotJustPatents.com



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