308.02    Fee for Filing Petition to Cancel

308.02(a)    In General

15 U.S.C. § 1064  [Trademark Act § 14] A petition to cancel a registration of a mark, stating the grounds relied upon, may, upon payment of the prescribed fee, be filed as follows by any person who believes that he is or will be damaged, including as a result of a likelihood of dilution by blurring or dilution by tarnishment under section 1125(c) of this title, by the registration of a mark on the principal register established by this Act, or under the Act of March 3, 1881, or the Act of February 20, 1905....

15 U.S.C. § 1092  [Trademark Act § 24] Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office. Whenever any person believes that he is or will be damaged by the registration of a mark on the supplemental register--

  • (1) for which the effective filing date is after the date on which such person’s mark became famous and which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title; or
  • (2) on grounds other than dilution by blurring or dilution by tarnishment, such person may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration.
  • 37 CFR § 2.111(c)
  • (1) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration for which cancellation is sought (see §2.6).
  • (2) An otherwise timely petition for cancellation will not be accepted via ESTTA unless the petition for cancellation is accompanied by a fee that is sufficient to pay in full for each named party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation.
  • (3) If an otherwise timely petition for cancellation is submitted on paper, the following is applicable if less than all required fees are submitted:
    • (i) If the petition for cancellation is accompanied by no fee or a fee insufficient to pay for one person to petition for cancellation against at least one class in the registration, the petition for cancellation will be refused.
    • (ii) If the petition for cancellation is accompanied by fees sufficient to pay for one person to petition for cancellation against at least one class in the registration, but fees are insufficient for a petition for cancellation against all the classes in the registration, and the particular class or classes against which the petition for cancellation is filed is not specified, the petition for cancellation will be presumed to be against the class or classes in ascending numerical order, including only the number of classes in the registration for which sufficient fees have been submitted.
    • (iii) If persons are joined as party petitioners, each must submit a fee for each class for which cancellation is sought. If the fees submitted are sufficient to pay for one person to petition for cancellation of the registration in at least one class but are insufficient for each named party petitioner, the first-named party will be presumed to be the party petitioner. Additional parties will be deemed to be party petitioners only to the extent that the fees submitted are sufficient to pay the fee due for each party petitioner. If persons are joined as party petitioners against a multiple class registration, the fees submitted are insufficient, and no specification of parties and classes is made at the time the party is joined, the fees submitted will be applied first on behalf of the first-named petitioner against as many of the classes in the registration as the submitted fees are sufficient to pay. Any excess will be applied on behalf of the second-named party to the cancellation against the classes in the registration in ascending numerical order.
  • (4) The filing date of a petition for cancellation is the date of receipt in the Office of the petition for cancellation, with proof of service on the owner of record, or on the owner’s domestic representative, if one has been appointed, at the correspondence address of record in the Office, and with the required fee, unless the petition is filed in accordance with § 2.198.

The rules governing cancellation fees are specified in 37 CFR § 2.111(c)(1) -37 CFR § 2.111(c)(4). The amount of the required fee is specified in 37 CFR § 2.6(a)(16). The required fee for a petition to cancel must be submitted with the petition; the effective filing date of a petition to cancel (and, hence, the date of commencement of the cancellation proceeding) is the date of receipt in the Office of both the petition to cancel showing proof of service and the required fee. [ Note 1.] See TBMP § 308.02(b).

The required fee must be submitted for each party joined as petitioner for each class sought to be cancelled, and if cancellation is sought for fewer than the total number of classes in the registration, the classes sought to be cancelled should be specified. [ Note 2.] See TBMP § 304.

For information on how to pay fees, see 37 CFR § 2.206 -37 CFR § 2.208, and TBMP § 118. For information on fee refunds, see 37 CFR § 2.209, and TBMP § 119.

NOTES:

 1.   See 37 CFR § 2.111(a), 37 CFR § 2.111(c)(1), and 37 CFR § 2.111(c)(4); Williamson-Dickie Manufacturing Co. v. Mann Overall Co., 359 F.2d 450, 149 USPQ 518, 520 (CCPA 1966). Cf. Fred Beverages, Inc. v. Fred’s Capital Management Co., 605 F.3d 968, 94 USPQ2d 1958, 1960 (Fed. Cir. 2010) (Board’s decision denying petitioner’s motion for leave to amend cancellation petition,for failure to submit fee for amendment at time of filing the motion,reversed; case remanded to Board for further consideration of motion to amend).

 2.   See 37 CFR § 2.111(c).

308.02(b)    Insufficient Fee

A petition for cancellation must be filed either through ESTTA or on paper. [ Note 1.] See TBMP § 309.

An otherwise timely petition for cancellation will not be accepted via ESTTA unless the petition to cancel is accompanied by a fee that is sufficient to pay in full for each named party petitioner to petition for cancellation of the registration of a mark in each class specified in the petition for cancellation. [ Note 2.]

If an otherwise timely petition for cancellation is submitted on paper, and if the petition is not accompanied by any fee, or a sufficient fee to pay for one person to petition to cancel the registration in at least one class, the petition will be rejected. [ Note 3.] If the petition to cancel is accompanied by fees sufficient to pay for one person to petition to cancel the registration in at least one class, but less than the required amount because multiple party petitioners and/or multiple classes in the registration are involved, the cancellation proceeding will be instituted, and the fee(s) submitted will be applied in the manner set forth in37 CFR § 2.111(c)(3)(ii) -37 CFR § 2.111(c)(3)(iii). [ Note 4.] The institution notice will identify the parties and classes for which the required fees were submitted. See TBMP § 310.

Except to the extent that the five-year period of Trademark Act § 14, 15 U.S.C. § 1064, is applicable in a particular case, there is no time limit for the filing of a petition to cancel an issued registration. Thus, if the petition is rejected for failure to submit a fee, or a fee that is sufficient to pay for one person to petition to cancel the registration in at least one class, the rejection of the petition is without prejudice to petitioner’s right to file, at any time thereafter, a new petition to cancel provided that the five-year period, if applicable, has not expired, or, if expired, that the petition recites a ground permitted after the expiration of the five-year period. [ Note 5.]

The responsibility for filing proper fees rests with the party filing the fees. [ Note 6.]

NOTES:

 1.   Board practice does not permit the filing of a petition for cancellation on CD-ROM.See 37 CFR § 2.126; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42247 (August 1, 2007).

 2.   Cf. Syngenta Crop Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1115 n.2 (TTAB 2009) (second named opposer not party to proceeding where notice of opposition named two opposers, but fee payment sufficient for only one opposer and only one opposer identified in ESTTA cover sheet); Vibe Records Inc. v. Vibe Media Group LLC, 88 USPQ2d 1280, 1282-83 (TTAB 2008) (where ESTTA filing process not completed because no fee was paid, date appearing on the ESTTA "Validate" screen is inoperative; opposition dismissed as a nullity).

 3.   See 37 CFR § 2.111(c)(3)(i).

 4.   See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1021 n.1 (TTAB 2009) (second petitioner not added as party plaintiff due to failure to pay additional fee).

 5.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (defective renewal application must be corrected and refiled within statutory time period);and In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

 6.   Cf. In re Holland American Wafer Co., 737 F.2d 1015, 222 USPQ 273, 275 (Fed. Cir. 1984) (regarding defective renewal application); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

308.02(c)    Petition Filed by Federal Trade Commission

There is no fee for a petition filed by the Federal Trade Commission to cancel a registration on the Principal Register. [ Note 1.] Cf. TBMP § 303.04.

NOTES:

 1.   See Trademark Act § 14, 15 U.S.C. § 1064.

308.02(d)    Fee for Counterclaim

For information concerning fees for counterclaims, see TBMP § 313.02.