Trademark cancellation proceedings allow businesses to challenge existing trademark registrations that may infringe on their rights. This can be a fairly involved and adversarial process – it gets expensive, as well!
However, there’s a new option that has recently been offered through the USPTO, allowing you to challenge an existing trademark without going through the more expensive cancellation process – it’s called an Expungement.
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Introduction to Trademark Expungement
The Lanham Act, commonly known as the Trademark Act, governs trademark law in the United States. Under this law, a trademark holder must actively maintain and use their mark to retain protection. This law also provides the framework for trademark cancellation proceedings.
Most trademark cancellations involve marks registered on the principal register. Businesses must be aware of the legal grounds for trademark cancellation to navigate the process effectively. Plus, they must be prepared for the potential expense of a full cancellation proceeding, which can drag on for years if the other party fights back.
Trademark “expungement” is an alternative to the traditional, more intense, cancellation proceedings that puts more options into trademark owners’ hands. Reexamination is another option offered to trademark owners, which is also less time consuming and costly than cancellation.
Overview of Expungement vs. Reexamination Proceedings
If you’re dealing with trademark registrations regularly, you may have heard about expungement and reexamination proceedings, but you might not be 100% sure what they actually entail or when you’d use each one.
These are two important mechanisms that the United States Patent and Trademark Office (USPTO) uses to keep the federal trademark register accurate and reliable. They were part of the Trademark Modernization Act, passed in 2020 and implemented starting in late 2021.
Both processes allow for the removal or correction of trademark registrations that may not meet the requirements set forth by trademark law. However, they each serve distinct purposes and follow different procedures.
Understanding the difference could save you a lot of headaches down the road.
Expungement proceedings are your go-to tool when you need to challenge a registered mark that was never actually used in commerce with some or all of the goods or services listed in the registration.
This process is particularly useful if you’re a trademark owner or business seeking to clear the register of marks that may be blocking your own trademark applications or rights, but which have never been put to legitimate use in the United States.
In contrast, reexamination proceedings address a different timing issue. They’re designed for situations where a registered mark may not have been in use in commerce as of certain critical dates. Reexamination can be initiated by any party, and it focuses specifically on whether the trademark owner actually met the use requirements at the relevant time.
Key differences between these proceedings include:
| Factor | Expungement | Reexamination |
| Primary Issue | Trademark was never actually used in commerce for registered goods/services | Trademark wasn’t being used in commerce by specific required dates |
| Filing Window | Available 3-10 years after registration date | Must file within first 5 years of registration |
| Cost | $400 per goods/services class | $400 per goods/services class |
| Registration Types | Sections 1, 44, and 66 registrations | Section 1 registrations only |
| Evidence Needed | Documentation proving lack of commercial use | Documentation proving nonuse at critical dates |
| Timing Focus | Never used vs. registered goods/services | Nonuse at filing date or statement of use deadline |
Both types of proceedings are not adversarial (meaning that the owner of the trademark being expunged/reexamined is not a party to the proceeding). This takes some pressure off of the one filing for the expungement or reexamination, in contrast to the traditional cancellation proceedings under TTAB.
For trademark owners, applicants, and practitioners, understanding the distinctions between expungement and reexamination is essential for protecting trademark rights and navigating the trademark office’s procedures effectively.
Each is appropriate for specific things at specific times, depending on the situation. Your trademark attorney can help figure out the best path forward.
Cancellation Proceedings
Let’s dig into the more complex cancellation proceedings a bit more, since not every situation is a good candidate for the simpler expungement or reexamination proceeding.
Cancellation proceedings involve a petition to cancel a trademark registration, which is filed with the TTAB.
Grounds for Trademark Cancellation
The Trademark Act outlines the particular grounds for cancellation. When filing, petitioners (the party seeking cancellation) must demonstrate a valid reason for challenging a trademark registration.
Grounds for trademark cancellation include:
- likelihood of confusion with an existing trademark,
- abandonment of their trademark,
- descriptiveness, and
- genericness.
Specific grounds for cancellation also include nonuse claims and fraud claims, which are commonly asserted in proceedings to challenge registrations based on lack of use or misrepresentations.
When asserting a reason for cancellation, it’s crucial to provide supporting evidence to substantiate the claims and meet the legal standards required by the USPTO and TTAB.
Cancellation proceedings can be complex and get quite costly (the other side can seek discovery, file motions and briefs, etc.), and experienced trademark attorneys can provide guidance on navigating the process.
That’s why the expungement procedure is a good alternative that can save quite a bit of time and money, particularly when attacking a trademark owned by a much larger company with a bigger legal budget.
To get another trademark cancelled, the petitioner must:
- demonstrate standing (the other trademark’s continued registration must affect you in some way) and
- provide evidence to support their claims (some legal reasons and evidence showing why the other trademark must be cancelled).
Cancellation proceedings are inter partes, a legal term meaning that both the party seeking the cancellation, and the one who owns the trademark potentially being cancelled, participate in the process. We discussed this above, as an advantage that the non-inter partes expungement option has (less stress, for sure!).
The TTAB will review the petition and (after a lengthy cancellation proceeding with lots of back and forth, and time and expense) determine whether to grant or deny the cancellation request.
Businesses should be prepared for the cost and the time involved in taking a cancellation proceeding to its final decision.
Understanding the rules and procedures of the TTAB is essential for a successful cancellation proceeding. All filings and case management for cancellation proceedings are handled through the TTAB’s electronic system.
Filing and Responding to a Petition for Cancellation
Petitioners (the ones filing) must file a petition for cancellation with the TTAB. The petition must include the registration number of the challenged mark, as well as detailed information and evidence to support their claims.
Respondents (the trademark owner whose mark is potentially being cancelled) must file a response to the petition within a certain time period (noted in the initial notice of the proceeding’s start, which includes the full schedule). This initial response, called an “Answer,” must address the claims and provide counter-evidence. During the evidence-gathering phase, parties may use document requests and “interrogatories” (questions presented for the other side to answer truthfully or legally object to) to obtain relevant materials and answers to questions.
Businesses must be aware that a required filing fee must be paid when submitting a petition, as well as other costs associated with cancellation proceedings. Though, if the other party never responds and loses by default, you get a refund of a portion of the fee.
The TTAB will ultimately review the petition and response, as well as any motions and briefs from the parties, determining whether to grant or deny the cancellation request.
Trial and Appeal
Cancellation proceedings may involve a trial, where evidence is presented and witnesses testify. An oral hearing may be requested by either of the parties during the trial phase.
The discovery phase is a structured period for gathering evidence through interrogatories, document requests, and depositions. After all of this, the TTAB will review the evidence and make a decision on the cancellation request.
Failure to respond to a petition or comply with deadlines can result in a default judgment, leading to cancellation of the trademark. In order for this to happen, though, Petitioners must first present prima facie evidence to support their claims, establishing a presumption of abandonment or non-use (basically, this means that the evidence is sufficient to show a case based on first impression).
Businesses who lose in a cancellation proceeding may appeal the decision to the Federal Circuit or District Court. Understanding the appeal process and procedures is crucial for businesses to protect their rights.
The Federal Circuit and District Court have different standards and procedures for reviewing trademark cancellation decisions – you definitely need an attorney who has experience in these matters to represent you.
New Proceedings and the District Court
Businesses may file any new TTAB proceedings directly with the appeals board, not via the normal USPTO processes for responding to office actions and other procedural matters. These filings include petitions for cancellation or oppositions.
Prior to July 2025, this was done through the ESSTA platform, but now uses the new TTAB Center site. For clarity, a trademark opposition is a legal procedure that occurs before a trademark is officially registered, while a cancellation proceeding takes place after registration.
A trademark opposition proceeding allows third parties to challenge a trademark application during the publication phase by filing a Notice of Opposition within a specific timeframe. The District Court has jurisdiction over trademark cancellation cases, and businesses may appeal TTAB decisions to the District Court.
As an alternative to appealing a TTAB decision, parties may also file a civil action in federal court. Understanding the differences between TTAB and District Court proceedings is crucial for businesses to navigate the system effectively.
The Lanham Act provides the framework for trademark law and cancellation proceedings. Businesses must be aware of the rules and procedures of the TTAB and District Court. The TTAB has also introduced an expedited cancellation pilot program to streamline and accelerate certain cancellation cases, such as those based on non-use or abandonment.
Cancellation Costs and Fees
Cancellation proceedings involve filing fees and costs, which can be significant. Businesses must be aware of the costs and fees associated with cancellation proceedings.
The TTAB charges filing fees for petitions, and businesses will most likely incur additional costs for attorney fees and evidence. Understanding the costs and fees involved in cancellation proceedings is essential for businesses to budget and plan.
Key cost considerations include:
- TTAB filing fees for petitions
- Attorney fees throughout the proceeding
- Evidence gathering and presentation costs
- Potential appeal costs if needed, post-TTAB ruling
Experienced trademark attorneys can provide guidance on managing costs and fees, and giving estimates of the expected costs depending on what the other party does.
Avoiding Cancellation and Expungement
Businesses can take steps to avoid cancellation proceedings, including conducting thorough trademark searches prior to filing (to make sure no one else is already using a confusingly-similar mark) and maintaining accurate records to prove usage. Maintaining and defending your own mark is essential to avoid cancellation.
To avoid expungement, it’s important to actually use the trademark for the goods and services you’ve applied for. If the evidence is out there, it will be difficult for another party to get your mark expunged.
Businesses must be aware of the rules and procedures of the TTAB and take steps to comply. Experienced trademark attorneys can provide guidance on avoiding cancellation proceedings.
Working with a Trademark Attorney
An experienced trademark attorney can provide guidance on navigating the threat of expungement, or the cancellation process (should it happen). Businesses should really consider working with a trademark attorney to ensure the best possible outcome given the circumstances.
Trademark attorneys can help businesses understand the grounds for cancellation and develop a strategy for responding to petitions. The Trademark Trial and Appeal Board Manual of Procedure (TTAB) gives procedural guidance in navigating the difficult processes involved in a cancellation.
The discovery conference is also an important step in all TTAB proceedings, where each party’s attorneys discuss evidence, explore discovery limitations, and consider options like accelerated case resolution/settlement.
Understanding the importance of working with a trademark attorney is crucial for businesses to protect their rights. The TTAB and District Court have complex rules and procedures, and a trademark attorney can provide valuable guidance.
Conclusion
Trademark expungements and cancellation proceedings are complex and require a thorough understanding of trademark law and procedure. Businesses must be aware of the grounds for expungement and cancellation, and take proactive measures to protect their trademark rights.
Working with an experienced trademark attorney is essential for navigating the cancellation process.
By being informed and prepared, businesses can effectively navigate trademark cancellation proceedings and protect their intellectual property. If you’re looking for assistance with trademark expungement or cancellation proceedings, click here to set up a consultation.
