Cancelling a Trademark in Federal Court: A Practical Guide

35 questions on cancelling a trademark in federal court, answered and cited by the UpLaw editorial team.

• Are “Booking.com” and “Google” generic?
• Can a federal court cancel a trademark registration, or only the USPTO?
• Can a mark still be cancelled as disparaging or scandalous?
• Can a registration that issued from an intent-to-use application be cancelled for lack of bona fide intent?
• Can assigning an intent-to-use application void the resulting registration?
• Can a trademark cancellation be won on summary judgment?
• Can a trademark owner defeat a cancellation counterclaim by promising not to sue?
• Can a TTAB decision bind the parties in later federal court litigation?
• Can part of a trademark registration be cancelled instead of the whole thing?
• Does incontestability make a trademark registration invulnerable?
• Does Section 1119 give a federal court jurisdiction over a cancellation claim by itself?
• How does a registrant rebut the three-year presumption of abandonment?
• How do parallel TTAB and district court proceedings interact?
• How do you prove a trademark has become generic?
• How much use does a registrant need to defeat a nonuse attack?
• How must a fraud claim against a trademark registration be pleaded?
• How should a cancellation counterclaim be pleaded in an infringement case?
• How should a registrant protect a registration against cancellation?
• Is listing goods you never sold on a trademark application fraud?
• What are the consequences of a finding that a mark is primarily merely a surname?
• What are the different forums for cancelling a trademark registration?
• What are the USPTO's expungement and reexamination proceedings?
• What can the TTAB not do in a cancellation proceeding?
• What does it mean for a mark to be “primarily merely a surname”?
• What extra hurdle does a product-design trade dress registration face?
• What is the difference between nonuse, abandonment, and fraud as cancellation grounds?
• What is the standard for proving fraud on the USPTO?
• What is trademark abandonment?
• What presumptions does a federal trademark registration carry?
• What should a challenger do first when evaluating a cancellation claim?
• Which cancellation grounds are only available in the first five years?
• Which cancellation grounds can be raised at any time?
• Who has the right to petition to cancel a trademark registration?
• Why can a functional product feature never be a trademark?
• Why is cancelling a registration such a powerful move in a trademark dispute?