Payment Schedule for Cancellation Proceeding

First Payment of $4,000 is due prior to opening the proceeding.

  • This payment will cover preparing and filing the Petition for Cancellation, preparing and attending the discovery conference, negotiating and preparing settlement agreements and/or co-existence agreements and closing the proceeding. 

The Second Payment of $4,000 is due prior to the discovery phase opening. 

  • This payment will cover preparing documents for discovery, including interrogatories, conducting and responding to depositions to gather evidence supporting your case.

The Third Payment of $4,000 is due prior to the trial phase opening.

  • This payment will cover preparing for trial, preparing all written documents which includes the submission of evidence and testimonies to the TTAB. 


What's Next 

Please use the form below to submit your payments for your cancellation proceeding.



Information Regarding Cancellation Proceeding 

To get your trademark application approved for registration, you'll need to go through a step called a cancellation proceeding. This step is needed because there's another trademark that using the same or similar trademark as you.  It was registered before yours, even though you started using your trademark first. In the world of trademarks, who files their application first can matter a lot. But since you used the trademark before the other application was filed, you have priority of use which gives you ownership rights under common law. Before your trademark can be officially registered, we have to cancel the other trademark's registration. This makes sure your rights are protected and clears the way for your trademark to be registered.

What happens if you do not go through the cancellation proceeding? 
Failing to file a cancellation proceeding when you have priority of use over a trademark can have significant legal and financial implications for your brand. Your pending trademark application will be cancelled and you would not be allowed to register your trademark.  By not challenging a conflicting trademark registration, you essentially allow the other party to solidify their claim to the trademark, potentially giving them the legal rights to use your brand name or logo. Over time, this acquiescence can be interpreted as you relinquishing any prior claims to the trademark, even if you were the first to use it in commerce. Consequently, the holder of the registered trademark may gain enough legal standing to sue you for trademark infringement, even though you originally had priority of use. This ironic twist can result in costly litigation, and you might be forced to rebrand or pay damages, despite having been the first to use the trademark. Thus, timely action through a cancellation proceeding is crucial to safeguarding your rights and preventing the costly irony of being sued for using your own brand.

What is a USPTO TTAB Cancellation Proceeding?
A USPTO Trademark Trial and Appeal Board (TTAB) cancellation proceeding is a legal process through which an individual or entity can challenge the registration of a trademark with the United States Patent and Trademark Office (USPTO). This proceeding is an administrative trial conducted before the TTAB, a body within the USPTO responsible for hearing and deciding various trademark disputes, including oppositions and cancellations.

The Importance of Pursuing a Cancellation Proceeding When You Have Priority of Use
Priority of use plays a crucial role in trademark disputes. It refers to the principle that the first party to use a trademark in commerce has the superior right to register and use that mark for certain goods and services. If you have priority of use over a registered trademark that conflicts with yours, initiating a cancellation proceeding is vital to moving your trademark application to registration, as well as protecting your brand and ensuring your exclusive rights to use the trademark.

Engaging in a cancellation proceeding allows you to challenge a registration that is a conflict with your trademark application and infringes on your prior rights, potentially leading to the cancellation of the conflicting trademark. This process is especially important in maintaining the integrity of your brand identity and preventing confusion among consumers about the source of goods or services.

Steps in the TTAB Cancellation Proceeding Process

  1. Filing the Petition for Cancellation: The process begins with the filing of a petition for cancellation. This document outlines the grounds for cancellation, such as prior use, likelihood of confusion, or fraud in obtaining the registration.
  2. Respondent’s Answer: The owner of the challenged registration (respondent) must file an answer to the petition, addressing the claims and asserting any defenses.
  3. Discovery Phase: Similar to litigation, both parties engage in a discovery phase, where they can request documents, submit interrogatories, and conduct depositions to gather evidence supporting their case.
  4. Trial Phase: The proceeding moves to a trial phase, where each party has the opportunity to submit evidence and testimonies to the TTAB. This phase is conducted through written submissions rather than in-person courtroom appearances.
  5. Final Decision: After reviewing the evidence and arguments, the TTAB issues a decision. If the petition for cancellation is successful, the challenged trademark registration may be cancelled. Either party may appeal the TTAB’s decision to federal court.

Legal Nature of TTAB Cancellation Proceedings
While TTAB cancellation proceedings are administrative in nature and do not take place in a traditional courtroom, they are akin to litigation in many respects. They involve a structured process of pleadings, discovery, and trials where legal representation is not only beneficial but often necessary to navigate the complexities of trademark law effectively.

It's crucial for parties involved in a cancellation proceeding to understand that this is a formal legal process with binding outcomes. The procedural and evidentiary requirements mirror those found in judicial litigation, emphasizing the need for thorough preparation, detailed evidence collection, and strategic legal arguments.

TTAB cancellation proceedings serve as a vital mechanism for moving your trademark application to registration, resolving trademark disputes and protecting the rights of trademark owners.