How to Challenge Invalid or Conflicting Trademark Registrations Before the TTAB

When a competitor’s trademark registration restricts your ability to use or register your brand, the U.S. trademark system provides a structured method to address the issue. Through a petition to cancel, a business or individual can formally challenge an existing registration that was wrongfully issued or that now conflicts with established rights. This process, handled by the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO), serves as a vital mechanism for maintaining fair competition and safeguarding trademark integrity.

A trademark cancellation proceeding allows a petitioner to remove registrations that may have been obtained in bad faith, were never lawfully used in commerce, or are likely to cause consumer confusion. At Cohn Legal, PLLC, our trademark attorneys assist clients in filing and defending against cancellation proceedings to protect their business assets and strengthen their intellectual property portfolios. This article explores what a petition to cancel is, who can file one, the legal grounds that support it, and how the process unfolds before the TTAB.

Understanding What a Petition to Cancel Is

A petition to cancel is an administrative legal action filed with the TTAB, requesting that an existing federal trademark registration be declared invalid. Unlike opposition proceedings which occur before a mark registers cancellation proceedings take place after registration has been granted. The TTAB acts as an adjudicative body that operates much like a court, but its jurisdiction is limited to matters related to trademark registration. It cannot award monetary damages or issue injunctions. Instead, its decisions focus solely on whether a mark should remain on the federal register.

The party initiating the action, called the petitioner, functions similarly to a plaintiff in civil litigation, while the owner of the registration, known as the respondent, serves as the defendant. Once the petition is filed, the TTAB sets a procedural schedule that outlines deadlines for pleadings, discovery, and trial submissions. The proceeding typically includes stages similar to federal litigation, including initial pleadings, the exchange of evidence, trial briefs, and a written decision issued by a panel of administrative trademark judges.

Cancellation proceedings are essential for businesses seeking to remove registrations that may block their applications, create marketplace confusion, or dilute the strength of their existing marks. Common grounds for cancellation include nonuse, abandonment, fraud, likelihood of confusion, genericness, and descriptiveness. Each of these grounds requires careful legal analysis and fact-based evidence to meet the TTAB’s procedural and substantive standards.

Who Can File a Petition to Cancel a Trademark?

Under Section 14 of the Lanham Act (15 U.S.C. § 1064), any party who believes they are or will be damaged by a trademark registration may file a petition to cancel. However, simply disliking or disagreeing with another party’s registration is not enough. The petitioner must demonstrate what the law refers to as “standing,” meaning they must show a real interest in the proceeding and a reasonable basis for believing that they would suffer harm if the registration remains active.

Establishing standing generally involves demonstrating that the petitioner has a legitimate commercial interest in the outcome. For example, a business may have standing if it has been using a similar or identical mark in commerce, if its own trademark application has been refused registration because of the challenged mark, or if the existing registration is causing confusion or dilution of its brand. Courts have consistently held that the petitioner’s belief in potential damage must be grounded in fact, not speculation. The Federal Circuit reaffirmed this principle in Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, finding that a petitioner must have a direct and legitimate commercial stake in the proceeding.

In practice, petitioners are often prior users of a similar mark, trademark owners whose applications have been blocked by the existing registration, or companies that compete in the same industry. Establishing standing early in the process is critical, as failure to demonstrate a sufficient legal interest can result in dismissal regardless of the merits of the claim. Engaging an experienced trademark attorney helps ensure that standing is properly established and that the petition is filed on sound legal grounds.

Legal Grounds for a Trademark Cancellation

A petition to cancel must be supported by one or more legal grounds recognized under the Lanham Act. These grounds fall into both substantive and procedural categories and are determined by statute and TTAB precedent. The most common bases for cancellation include abandonment, nonuse, fraud, likelihood of confusion, descriptiveness, genericness, and dilution.

Abandonment occurs when a trademark owner has stopped using a mark in commerce and shows no intent to resume use. Under 15 U.S.C. § 1127, three consecutive years of nonuse constitute prima facie evidence of abandonment. Evidence such as discontinued sales, lack of marketing activity, or absence from commercial use can establish that the registrant no longer intends to use the mark.

Nonuse is another frequent basis for cancellation. A registration may be invalid if the registrant never used the mark in commerce prior to registration, especially in cases involving intent-to-use applications that were allowed to mature without genuine commercial use. To address these issues, the USPTO created the Expedited Cancellation Program, which provides an accelerated path for removing unused marks and clearing “deadwood” from the trademark register.

Fraud on the USPTO is a more serious allegation and arises when a registrant knowingly makes false statements to the USPTO with the intent to deceive during the application or maintenance process. Examples include false claims of use or misrepresenting ownership or the nature of goods and services. The burden of proof in fraud cases is high. In Great Concepts, LLC v. Chutter, Inc. (2023), the Federal Circuit emphasized that even materially false statements must have been made with intent to deceive for a fraud claim to succeed.

Likelihood of confusion is perhaps the most common ground for cancellation. It applies when a registered mark is so similar to another mark that it may confuse consumers regarding the source of the goods or services. The TTAB evaluates likelihood of confusion using the well-known DuPont factors, which consider the similarity of the marks, relatedness of the goods or services, trade channels, and other marketplace conditions. To prevail on this ground, a petitioner must show that its trademark rights predate those of the registrant, either through earlier registration or prior use in commerce.

Genericness and descriptiveness also provide bases for cancellation. A generic term cannot serve as a trademark because it identifies the product itself rather than its source. Likewise, descriptive marks can be cancelled if they have not acquired secondary meaning or distinctiveness in the minds of consumers. Petitioners must demonstrate that consumers view the mark as a description of the product rather than an indicator of origin.

Finally, dilution applies to owners of famous marks who can show that another registration weakens or tarnishes their brand’s distinctiveness. Dilution claims do not require proof of confusion or direct competition. A related ground, deceptive or misdescriptive use, applies when a mark misleads consumers about the characteristics, origin, or quality of goods or services.

Time Limits for Filing a Cancellation Petition

Timing is critical in trademark cancellation proceedings. Most claims must be brought within five years of the registration date, although certain exceptions apply. The five-year limitation under 15 U.S.C. § 1064 prevents parties from challenging long-standing registrations except on specific grounds.

Claims such as likelihood of confusion and descriptiveness must typically be filed within this five-year period. However, other grounds, such as abandonment, fraud, genericness, and functionality, can be raised at any time because they affect the fundamental validity of the registration. The law recognizes that marks obtained through deception or that have fallen into disuse should not remain on the register indefinitely.

Additionally, marks on the Supplemental Register are not subject to the five-year limitation and may be challenged for any reason at any time. Failure to observe statutory deadlines can result in dismissal even if the substantive claims are strong. Therefore, reviewing the registration date and evaluating applicable deadlines early in the process is vital to preserving your right to challenge.

How to File a Petition for Cancellation

A petition to cancel is filed electronically through the USPTO’s Electronic System for Trademark Trials and Appeals (ESTTA). The filing requires detailed information about the registration, including the registration number, the goods or services covered, and the petitioner’s standing. The petition should clearly set out the factual and legal grounds for cancellation and include a concise statement explaining how the petitioner will be harmed if the registration remains valid.

The filing fee, as of 2025, is $600 per class of goods or services being challenged. Once the petition is submitted, the TTAB issues a Notice of Institution, which formally initiates the proceeding and sets deadlines for the respondent’s answer, discovery, and trial stages. The notice includes a schedule that both parties must follow carefully.

If technical difficulties prevent filing through ESTTA, a paper submission may be permitted only under extraordinary circumstances with a petition to the Director. However, nearly all filings are made electronically.

Discovery and Pre-Trial Procedure

After the respondent submits an answer, the proceeding moves into the discovery phase, which allows both sides to exchange evidence and information. Discovery is governed by the Federal Rules of Civil Procedure (FRCP) and the Trademark Trial and Appeal Board Manual of Procedure (TBMP). The process begins with a discovery conference, where the parties discuss the claims, defenses, and possibilities for settlement. They must also address issues such as electronically stored information and disclosure obligations.

Following the conference, each side serves initial disclosures that identify relevant witnesses and documents. During discovery, the parties may issue interrogatories, request documents, seek admissions, and take depositions to obtain evidence. Discovery usually lasts six months, though it may be extended with Board approval. The quality of evidence collected during discovery often determines the strength of a case before trial.

Trial and Presentation of Evidence

Once discovery concludes, the TTAB sets three testimony periods: one for the petitioner to present its evidence, one for the respondent to defend and rebut, and a final period for the petitioner to submit rebuttal evidence. These testimony periods are strictly timed and must adhere to procedural rules under 37 C.F.R. § 2.121.

All evidence is presented in written form through declarations, depositions, or authenticated records. Parties must provide pretrial disclosures at least fifteen days before their testimony period begins, identifying the witnesses and documents they intend to use. There is no live trial before the TTAB; the entire case is decided on the written record.

Failure to submit timely disclosures or properly authenticate evidence can lead to exclusion. Given the technical nature of TTAB procedures, precision in filing and evidentiary presentation is critical.

Briefing and Oral Hearing

After the testimony periods close, both sides prepare written trial briefs. These briefs summarize the legal arguments, cite relevant statutes and case law, and reference specific evidence from the record. The petitioner files an opening brief, followed by the respondent’s answering brief, and then the petitioner may submit a reply. Each brief must comply with formatting requirements and page limits established by the TTAB.

Either party may request an oral hearing, which gives counsel the opportunity to appear before a panel of administrative trademark judges to present oral arguments and respond to questions. Although not mandatory, oral argument can be beneficial in cases involving complex legal issues or conflicting evidence.

Final Decision and Appeals

After reviewing the record, the TTAB issues a final written decision. The decision outlines findings of fact, legal conclusions, and the Board’s determination on whether the trademark registration should remain in force or be cancelled.

If the losing party disagrees with the outcome, they may appeal under 15 U.S.C. § 1071. Two appeal options are available. The first is to appeal directly to the U.S. Court of Appeals for the Federal Circuit, which reviews the case based on the TTAB record. The second is to file a civil action in U.S. District Court, which allows the introduction of new evidence and a full trial. Each route has strategic advantages depending on cost, timeline, and evidentiary needs.

The Expedited Cancellation Program

The USPTO’s Expedited Cancellation Program provides a simplified pathway for clear-cut cases involving nonuse or abandonment. Designed to improve efficiency, the program reduces procedural complexity, limits discovery to essential disclosures, and accelerates the timeline to resolution. It is particularly beneficial in cases where a registrant has never used the mark in commerce or has clearly ceased all use. This streamlined process can save businesses both time and cost while clearing inactive marks from the register.

Strategic Considerations Before Filing

Before initiating a cancellation proceeding, it is important to evaluate the facts, evidence, and strategic objectives behind the claim. Businesses should first determine whether the registrant is actively using the mark in commerce by reviewing advertising, websites, social media, and product listings. Collecting evidence of nonuse or abandonment strengthens the case.

At the same time, petitioners should compile documentation of their own trademark rights, including proof of first use, geographic reach, and market presence. In some cases, alternative dispute resolution may offer a faster and less expensive solution. A cease-and-desist letter or coexistence agreement can sometimes resolve conflicts without the need for litigation.

Companies should also consider whether the challenged registration is blocking a pending trademark application. If so, successful cancellation can remove the obstacle and clear the path for registration. Because TTAB proceedings are highly technical, missing a filing deadline or failing to comply with procedural requirements can result in dismissal. Consulting with a qualified trademark litigation attorney ensures compliance with all TTAB rules and maximizes the likelihood of success.

Conclusion

Filing a petition to cancel a trademark is one of the most effective ways to enforce your trademark rights and protect your brand from conflicting or invalid registrations. Although the process is administrative rather than judicial, it requires careful preparation, strong evidence, and strategic legal advocacy.

At Cohn Legal, PLLC, our attorneys specialize in TTAB proceedings, including cancellations, oppositions, and appeals. We help clients analyze their claims, compile compelling evidence, and navigate every procedural stage with precision and confidence. Whether you are seeking to remove an unused registration, challenge a confusingly similar mark, or defend your own trademark from cancellation, our team provides tailored legal solutions designed to protect what matters most, your brand.

If you are facing a trademark conflict or believe a registration has been improperly maintained, contact Cohn Legal, PLLC today for a free consultation. Our experienced trademark attorneys will review your case, explain your options, and guide you toward a strategic resolution.

Your brand is everything. Protect it forever and always.