What is trademark cancellation? Trademark cancellation is the legal process of removing a registered trademark from the books. It is a legal argument under the Lanham Act. The purpose of trademark cancellation is to allow a party to petition for removal of a trademark from the federal register. This is done by filing a petition to cancel, which is usually argued before the Trademark Trial and Appeal Board (TTAB). In some cases, the argument can be litigated in federal court, where the courts can also cancel a mark.
We are currently in the process of filing a petition to cancel. What that means is after a trademark is registered, you have up to 5 years until it is incontestable. Basically, you can still challenge it - it does not mean that once a trademark is registered it is set in stone.
To cancel a trademark, the petitioner must prove that the mark will cause harm if it is not cancelled. The petitioner only has to prove that damages may occur - not that they have already occurred. Generally, the TTAB concerns itself with trademark owners trying to stop legitimate competition through misuse of its mark.
In this particular case, the registered trademark is Pure Monk and our client is selling a product called Pure Monk Fruit. What is interesting about this is that monk fruit has been around since the thirteenth century and ‘pure’ is a common word that people use; it is natural, there are no added ingredients to the product.
Our client is using the name Honest Products Pure Monk Fruit and the trademark owner (complainant) successfully removed our client from their Pure Monk listings.
Under the Lanham Act, “at any time if the registered mark becomes the generic name for the goods” then the trademark may be challenged via petition to cancel the mark (Genericide). In other words, the trademark will lose its protection if it becomes the actual name of the product rather than a reference to the seller in the eyes of the consuming public. Examples of trademarks which have been killed by genericide include such recognizable words as “yo-yo,” ”escalator,” “aspirin,” and “thermos.”
We were able to get our client back on the ASINs, but he's worried about this issue recurring. We are in the process of filing the petition to cancel so that the complainant no longer has the ability to file complaints with Amazon.
For more information about filing a petition to cancel, contact us:
1-877-9-SELLER
CJ@AmazonSellersLawyer.com
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