• Cancellations are administrative proceedings where testimony and arguments are submitted to the Trademark Trial and Appeal Board for determination. Typically, the basis for a cancellation is the mark conflicts with a third partys rights in a mark.
    Many cancellation actions are brought on the basis of non-use, or non-use for three consecutive years which is prima facie abandonment. The benefit of a prima facie abandonment case is that the mark owner has the burden of proving that the mark has not been abandoned instead of the plaintiff.
    Trademark cancellations can also be brought on the basis of fraud on the trademark office or that the mark has become generic. It is important to know that after five years of registration of a mark, many reasons for canceling a mark, including prior use of mark, are no longer available.
    Most cancellations are settled early on typically because the owner of the mark has lost interest in the mark, ceases to be in business, or the parties enter into a mutual consent to use and register their marks or despite investigations into use, it is clear that the mark is in use and that the cancellation would not be successful.
    If the case is not settled early on, then there is a specific schedule of events that need to be adhered to in order to successfully defend or prosecute the opposition.
    Like regular court litigation, there is the discovery phase, where each side can obtain discovery through the conventional ways, such as:
    Requesting documents or things
    Asking written questions
    Asking for specific admissions of facts
    Taking a deposition
    After the discovery phase, there is the testimony phase, where each party asks questions and elicits answers to put the facts of the case into the record. First the plaintiff goes, then the defendant, and the plaintiff then gets a reply period. This is just like as if you were in court and testifying, except that it is done in lawyers offices before a court reporter.
    After the testimony phase, there is a briefing phase, where each party gets to submit its briefs applying the law to the facts as elicited in the testimony phase. First the plaintiff, then the defendant, and then the plaintiff gets the last word by filing a reply brief.
    Oral argument is available, but it is discretionary, and not many cases are argued.