308.02    Fee for Filing Petition to Cancel

308.02(a)    In General

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

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Trademark Act § 24, 15 U.S.C. § 1092   Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office.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.

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37 C.F.R. § 2.111(d) The petition for cancellation must be accompanied by the required fee for each party joined as petitioner for each class in the registration(s) for which cancellation is sought (see § 2.6). A petition cannot be filed via ESTTA unless the petition is accompanied by a fee that is sufficient to pay in full for each named petitioner to seek cancellation of the registration(s) in each class specified in the petition. A petition filed in paper form that is not accompanied by a fee sufficient to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought may not be instituted.

(e) The filing date of a petition for cancellation is the date of electronic receipt in the Office of the petition and required fee. In the rare instances that filing by paper is permitted under these rules, the filing date of a petition for cancellation will be determined in accordance with §§ 2.195 through 2.198.

The rules governing cancellation fees are specified in 37 C.F.R. § 2.111(d). The amount of the required fee is specified in 37 C.F.R. § 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 electronic receipt in the Office of both the petition to cancel and the required fee. [ Note 1.] See TBMP § 308.02(b). In the rare instance when an otherwise timely paper filing of a petition to cancel, accompanied by the required fees, has been permitted on Petition to the Director, the filing date will be determined in accordance with 37 C.F.R. § 2.195, 37 C.F.R. § 2.196, 37 C.F.R. § 2.197, and 37 C.F.R. § 2.198. [ Note 2.]

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 3.] See TBMP § 304.

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

NOTES:

 1.   See 37 C.F.R. § 2.111(a), 37 C.F.R. § 2.111(d), and 37 C.F.R. § 2.111(e); 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 C.F.R. § 2.111(e).

 3.   See 37 C.F.R. § 2.111(d).

308.02(b)    Insufficient Fee

A petition for cancellation must be filed electronically through ESTTA. [ 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.]

In those rare instances where an otherwise timely petition to cancel has been filed on paper, and such filing is not accompanied by any fee, or a sufficient fee to pay in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the petition to cancel will be rejected and the Board will not institute a proceeding. [ Note 3.]

Except to the extent that the five-year period of Trademark Act § 14(3), 15 U.S.C. § 1064(3)  or Trademark Act § 14(5), 15 U.S.C. § 1064(5), or the three-year period of Trademark Act § 14(6), 15 U.S.C §1064(6)  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 in full for each named petitioner for each class in the registration(s) for which cancellation is sought, the rejection of the petition is without prejudice to petitioner’s right to electronically 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 three or five-year period. [ Note 4.]

The responsibility for filing proper fees rests with the party filing the fees. [ Note 5.]

NOTES:

 1.   See 37 C.F.R. § 2.111(c)(1). Board practice does not permit the filing of a petition for cancellation on CD-ROM. See 37 C.F.R. § 2.126; MISCELLANEOUS CHANGES TO TRADEMARK TRIAL AND APPEAL BOARD RULES, 72 Fed. Reg. 42242, 42247 (August 1, 2007).

 2.   See 37 C.F.R. § 2.111(d). 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 C.F.R. § 2.111(d).

 4.   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); In re Application Papers Filed November 12, 1965, 152 USPQ 194, 195 (Comm’r 1966) (regarding insufficient filing fee for patent application).

 5.   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.