Petitioning to Cancel Third-Party Registration
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If the mark you seek to challenge is already registered, a petition to cancel the registration can be filed. There are numerous grounds for a petition for cancellation, one of the most common being priority and likelihood of confusion.
Grounds for Cancellation
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Priority and likelihood of confusion |
Trademark Act Sections 14(1) and 2(d) |
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The mark is merely descriptive |
Trademark Act Sections 14(1) and 2(e)(1) |
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The mark is or has become generic |
Trademark Act Section 14(3), or Section 23 if on Supplemental Register |
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The mark is deceptively misdescriptive |
Trademark Act Sections 14(1) and 2(e)(1) |
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The mark is primarily geographically descriptive |
Trademark Act Sections 14(1) and 2(e)(2) |
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The mark is primarily geographically deceptively misdescriptive |
Trademark Act Sections 14(1) and 2(e)(3) |
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The mark is primarily merely a surname |
Trademark Act Sections 14(1) and 2(e)(4) |
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The mark comprises matter that, as a whole, is functional |
Trademark Act Sections 14(1) and 2(e)(5), or Section 23 if on Supplemental Register |
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No use of mark in commerce before application, amendment to allege use, or statement of use was filed |
Trademark Act Sections 14(1) and 1(a), (c), and (d) |
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Abandonment |
Trademark Act Section 14(3) |
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Failure to function as a mark |
Trademark Act Sections 14(1) and 1,2 and 45 |
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The mark is not inherently distinctive and has not acquired distinctiveness |
Trademark Act Sections 14(1) and 1,2 and 45; and Section 2(f) |
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Dilution by blurring |
Trademark Act Sections 14(1) and 43(c) |
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Dilution by tarnishment |
Trademark Act Sections 14(1) and 43(c) |
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Registrant not rightful owner of mark for identified goods or services |
Trademark Act Sections 14(1) and 1 |
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False suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute |
Trademark Act Sections 14(3) and 2(a) |
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Deceptiveness |
Trademark Act Sections 14(3) and 2(a) |
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Geographic indication which, if used on or in connection with wine or spirits, identifies a place other than the origin of the goods |
Trademark Act Sections 14(3) and 2(a) |
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The registration is being used by, or with the permission of, the registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used |
Trademark Act Section 14(3) |
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Consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof |
Trademark Act Sections 14(3) and 2(b) |
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Consists of or comprises a name, portrait, or signature of a living individual without written consent, or the name, portrait, or signature of a deceased president without the written consent of the surviving spouse |
Trademark Act Sections 14(1) and 2(c) |
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Continued registration barred by claim or issue preclusion |
Mayer/Berkshire Corp. v. Berkshire Fashions Inc., 424 F.3d 1229, 76 USPQ2d 1310 (Fed. Cir. 2005) |
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Fraud on the USPTO |
Trademark Act Section 14(3); In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009) |
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Violates the provisions of Trademark Act § 4 |
Trademark Act Section 4 (collective and certification marks) and Sections 14(3) and (5) |
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Misuse of registration symbol |
Copelands’ Enterprises Inc. v. CNV Inc., 945 F.2d 1563, 20 USPQ2d 1295 (Fed. Cir. 1991) |
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Title of single creative work |
Trademark Act Sections 1,2 and 45, Mattel Inc. v. Brainy Baby Co.,101 USPQ2d 1140 (TTAB 2011) |
