307.01    Petition That May Be Filed at Any Time After Registration

A petition to cancel a registration may be filed at any time in the case of a registration issued on the Supplemental Register under the Act of 1946, 15 U.S.C. § 1051  et. seq., or under the Act of 1920. A petition to cancel may also be filed at any time in the case of a registration issued under the Act of 1881 or the Act of 1905 which has not been published under Trademark Act § 12(c), 15 U.S.C. § 1062(c). [ Note 1.]

In addition, a petition to cancel any registration may be filed at any time on any ground specified in Trademark Act § 14(3) or Trademark Act § 14(5), 15 U.S.C. § 1064(3)  or 15 U.S.C. § 1064(5). [ Note 2.]

As permitted by Trademark Act § 14(3), 15 U.S.C. § 1064(3), a petition to cancel may be filed at any time on grounds that, for example, the mark has been abandoned; the registration was obtained by fraud; the mark is generic; the mark is geographically deceptive, [ Note 3.], the mark falsely suggests a connection with a person’s name or identity, [ Note 4.], the mark comprises matter that, as a whole, is functional [ Note 5.], or the mark comprises the flag of the United States [ Note 6.], or the name of a living individual without the individual’s consent. [ Note 7.] See also TBMP § 307.04.

The filing date of the petition is the date of electronic receipt in the Office of the petition, with the required fee. [ Note 8.] In the rare instance that a paper filing is permitted by the Director, on petition, 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 9.] If the petition is filed in accordance with 37 C.F.R. § 2.198, the filing date of a petition will be the date of deposit 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 of receipt in the Office is considered the filing date of the petition. [ Note 10.]

For additional information on selected grounds for opposition and cancellation, see TBMP § 309.03(c).

For information on filing fees, see TBMP § 308. For information on service of the petition for cancellation, see TBMP § 309.02(c).

NOTES:

 1.   See Trademark Act § 14, 15 U.S.C. § 1064  and Trademark Act § 24, 15 U.S.C. § 1092; 37 C.F.R. § 2.111(b).

 2.   See Trademark Act § 14, 15 U.S.C. § 1064  and Trademark Act § 24, 15 U.S.C. § 1092; 37 C.F.R. § 2.111(b).

 3.   See, e.g., K-Swiss Inc. v. Swiss Army Brands Inc., 58 USPQ2d 1540 (TTAB 2001) (geographic deceptiveness ground available for registration over five years old); Consorzio del Prosciutto di Parma v. Parma Sausage Products Inc., 23 USPQ2d 1894, 1898 (TTAB 1992) ("[I]f the registrant fails to perform actions which are within his control, e.g., he abandons his mark or uses his mark so as to misrepresent the source of the goods or allows the mark to become, or promotes it as, the generic name for the goods, his registration can be cancelled because he has, in effect, participated in its destruction."). Cf. Caymus Vineyards v. Caymus Medical Inc., 107 USPQ2d 1519, 1524-25 (TTAB 2013) (registration over five years old may not be challenged on a ground that is available only when the registration is less than five years old); Treadwell's Drifters Inc. v. Marshak, 18 USPQ2d 1318, 1320 (TTAB 1990) (ownership of mark not available ground for registration over five years old); Western Worldwide Enterprises Group Inc. v. Qinqdao Brewery, 17 USPQ2d 1137, 1139 (TTAB 1990) (registration over five years old may not be challenged on ground that mark is geographically descriptive under Trademark Act § 2(e)(2), 15 U.S.C. § 1052(e)(2)).

 4.   See Trademark Act § 2(a), 15 U.S.C. § 1052(a). See also Sentry Chemical Company v. Pennwalt Corp., 212 USPQ 25 (TTAB 1980) (Section 2(a) claims available for registration over five years old).

Section 2(a)’s clause concerning marks that may disparage or bring into contempt or disrepute was held to be unconstitutional by the U.S. Supreme Court in Matal v. Tam, 137 S. Ct. 1744, 122 USPQ2d 1757 (2017), and no longer provides a basis to petition to cancel a registration.

Section 2(a)’s clause concerning immoral or scandalous matter was held to be unconstitutional by the U.S. Supreme Court in Iancu v. Brunetti, 139 S. Ct. 782, 2019 USPQ2d 232043 (2019), and no longer provides a basis to petition to cancel a registration.

 5.   See Trademark Act § 2(e)(5), 15 U.S.C. § 1052(e)(5)  See, e.g., In re MK Diamond Products, Inc., 2020 USPQ2d 10882 (TTAB 2020) (applicant’s configuration mark comprised of a saw blade design found functional).

 6.   See Trademark Act § 2(b), 15 U.S.C. § 1052(b).

 7.   See Trademark Act § 2(c), 15 U.S.C. § 1052(c).

 8.   See 37 C.F.R. § 2.111(e).

 9.   See 37 C.F.R. § 2.111(e).

 10.   See 37 C.F.R § 2.198(b).