307.02(a) In General
A petition to cancel a registration issued on the Principal Register under the Act of 1946, on a ground not specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5), must be filed within 5 years from the date of the registration of the mark. [ Note 1.] Similarly, a petition to cancel a registration issued on the Principal Register under the Act of 1881 or the Act of 1905, and published under the provisions of Trademark Act § 12(c), 15 U.S.C. § 1062(c) on a ground not specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) must be filed within 5 years from the date of publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 2.]
Although a petition to cancel filed after the expiration of the five-year period, in the case of such a Principal Register registration, must recite one of the grounds specified in Trademark Act § 14(3) or 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5), a petition to cancel filed prior to the expiration of the five-year period may be based on any ground which could have prevented registration initially. [ Note 3.] The grounds for cancellation which are thus available in the case of a petition filed within the five-year period, but not thereafter, include: all of the grounds specified in Trademark Act § 14(3) and Trademark Act § 14(5), 15 U.S.C. § 1064(3) or 15 U.S.C. § 1064(5) as well as likelihood of confusion under Trademark Act § 2(d), 15 U.S.C. § 1052(d); [ Note 4.], certain grounds specified in Trademark Act § 2(e), 15 U.S.C. § 1052(e) (including a claim that respondent’s mark is merely descriptive or deceptively misdescriptive, that respondent’s mark is geographically descriptive or geographically deceptively misdescriptive, or that respondent’s mark is primarily merely a surname) [ Note 5.]; the ground that respondent is not the owner of the registered mark; and the ground that there was no bona fide use of respondent’s mark in commerce to support the original registration.
For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c). For a discussion of standing to file a petition to cancel or a notice of opposition, see TBMP § 309.03(b).
As stated above, a petitioner may not seek to cancel a Principal Register registration over 5 years old on the ground of likelihood of confusion. [ Note 6.] However, under Trademark Act § 18, 15 U.S.C. § 1068, a petitioner may seek to partially cancel a registration over 5 years old by restricting the goods or services therein in order to avoid a likelihood of confusion. For a discussion of a petition to partially cancel a registration under Trademark Act § 18, 15 U.S.C. § 1068, see TBMP § 309.03(d).
Note that a petitioner may not seek to cancel a Principal Register registration over 5 years old on the ground that it is generic, where the genericness claim is made only as to a portion of the mark and not the entire mark. However, the alleged generic nature of the portion of the mark may have a bearing on the likelihood of confusion analysis. [ Note 7.]
The five-year period specified in Trademark Act § 14(1), 15 U.S.C. § 1064(1), (i.e., "Within five years from the date of the registration of the mark under this Act") includes the fifth anniversary date of the registration. [ Note 8.] Cf. TMEP § 1604.04 and TMEP § 1606.03. Similarly, the five-year period specified in Trademark Act § 14(2), 15 U.S.C. § 1064(2), ("Within five years from the date of publication under Section 12(c) hereof of a mark registered under the Act of March 3, 1881, or the Act of February 20, 1905"), includes the fifth anniversary date of the publication under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 9.]
The filing date of the petition is the date of electronic receipt in the Office of the petition, with the required fee. [ Note 10.] In the rare instance that a paper filing is permitted by the Director, on petition, the Certificate of Mailing procedure described in 37 C.F.R. § 2.197 and the "Priority Mail Express®" procedure described in 37 C.F.R. § 2.198 are available. [ Note 11.] If the paper filing of the petition to cancel has been permitted by way of Petition to the Director, the filing date of the petition will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, and 37 C.F.R. § 2.197 unless the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. § 2.198. [ Note 12.] If the petition is filed by the "Priority Mail Express® Post Office to Addressee" service of the United States Postal Service ("USPS") in accordance with 37 C.F.R. §2.198, then the filing date of the petition is the date the petition was deposited with the USPS i.e., the date shown by the "date in" date on the "Priority Mail Express®" label or other official USPS notation, unless the "date in" date cannot be determined, in which case the date the notice is received in the Office is considered the filing date of the petition. [ Note 13.]
For information on filing fees, see TBMP § 308.
NOTES:
1. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1863 (TTAB 2007) (claim under Trademark Act § 2(d), 15 U.S.C. § 1052(d) is time-barred under Trademark Act § 14(3), 15 U.S.C. § 1064(3); Tri-Star Marketing LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1913 (TTAB 2007) (same); Arman’s Systems, Inc. v. Armand’s Subway, Inc., 215 USPQ 1048, 1050 (TTAB 1982) (the filing date of the petition is the operative date in determining whether the cancellation is time barred, not the date that the notice of the proceeding is mailed to the parties). Cf. British-American Tobacco Co. Limited v. Philip Morris Inc., 55 USPQ2d 1585, 1590 (TTAB 2000) (Trademark Act § 14, 15 U.S.C. § 1064 does not limit Board’s authority to entertain an action under Article 8 of the Pan American Convention against a registration over five years old).
2. See Trademark Act § 14(1) and Trademark Act § 14(2), 15 U.S.C. § 1064(1) and 15 U.S.C. § 1064(2); 37 C.F.R. § 2.111(b).
3. See Person’s Co. v. Christman, 900 F.2d 1565, 14 USPQ2d 1477, 1479 (Fed. Cir. 1990); International Mobile Machines Corp. v. International Telephone and Telegraph Corp., 800 F.2d 1118, 231 USPQ 142, 142 (Fed. Cir. 1986); International Order of Job’s Daughters v. Lindeburg and Co., 727 F.2d 1087, 220 USPQ 1017, 1020 (Fed. Cir. 1984); and Kellogg Co. v. Pack’Em Enterprises Inc., 14 USPQ2d 1545, 1549 (TTAB 1990), aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
4. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007) (Trademark Act§ 2(d), 15 U.S.C. § 1052(d) not a legitimate basis for petition to cancel a registered mark where the registration is more than five years old). Cf. Liberty Trouser Co. v. Liberty & Co., 222 USPQ 357, 358 (TTAB 1983) (claim of likelihood of confusion accepted as proper allegation of petitioner’s standing with respect to pleaded grounds of fraud and abandonment).
5. See The Equine Touch Foundation Inc. v. Equinology, Inc., 91 USPQ2d 1943, 1945(TTAB 2009) (petition to cancel a registration on the Principal Register on a claim that the mark is descriptive may be filed at any time within five years of the date of registration). Cf. Montecash LLC v. Anzar Enterprises Inc., 95 USPQ2d 1060, 1061(TTAB 2010) (registration more than five years old may not be cancelled based on claim that a portion of the mark is generic term); Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (same; motion to strike claim granted).
6. See Otto International Inc. v. Otto Kern GmbH, 83 USPQ2d 1861, 1862-63 (TTAB 2007).
7. See Finanz St. Honore B.V. v. Johnson & Johnson, 85 USPQ2d 1478, 1480 (TTAB 2007) (decision to strike counterclaim as time-barred does not affect respondent’s ability to argue that a portion of the mark is generic and should be accorded less weight in a likelihood of confusion analysis).
8. See Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990) (fifth-year anniversary falling on a weekend or holiday).
9. Cf. Strang Corp. v. Stouffer Corp., 16 USPQ2d 1309, 1310 (TTAB 1990);TMEP § 1604.04 and TMEP § 1606.03.
10. See 37 C.F.R. § 2.111(e).
11. See 37 C.F.R. § 2.111(e), 37 C.F.R. § 2.197(a) and 37 C.F.R. § 2.198(a).
12. See 37 C.F.R. § 2.111(e).
13. See 37 C.F.R. § 2.198.