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Trademark Act § 24, 15 U.S.C. § 1092   Marks for the supplemental register shall not be published for or be subject to opposition, but shall be published on registration in the Official Gazette of the Patent and Trademark Office.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