Challenging Trademark Rights After Five Years of Registration at the TTAB

Once a trademark registration is more than five years old it becomes more difficult to invalidate the trademark rights. If the registration is less than five years old, the party challenging the trademark rights can rely on any ground that could have prevented registration initially. However, if the trademark registration is over five years, then it can only be cancelled for one of the specific grounds listed in Section 14 of the Lanham Act. Section 14 of the Trademark Act only applies to cancellations proceeedings at the Trademark Trial and Appeal Board ("TTAB)" and not in Federal Court.

Marks that are older than five years cannot be challenged based on likelihood of confusion or descriptiveness at the TTAB. Those two grounds are the most common grounds asserted to invalidate trademark rights and are eliminated from a petitioner's arsenal after five years of registration. Some examples of descriptive claims include geographically descriptive, deceptively misdescriptive, or primarily merely a surname.

Once a trademark registration is over five years, then it can only be cancelled for one of the specific grounds listed in Section 14 of the Lanham Act. Section 14 includes the following grounds:

1. The mark has become the generic name for the goods or services or a portion of the mark has become generic;
2. The trademark is functional;
3. The trademark has been abandoned;
4. The trademark registration was obtained fraudently;
5. The registration was obtained in violation of the provisions pertaining to collective marks and certification marks;
6. The mark violates the provisions of Section 2(a) of the Lanham Act in that the mark consists of immoral, scandalous, or deceptive matter; a mark disparages persons living or dead, institutions, beliefs or national symbols; a mark falsely suggests a connection with persons living or dead, institutions, beliefs, or national symbols; a mark consists of a geographical indication which when used with wines or spirits identifies a place other than the origin of goods;
7. The registration consists of insignia of the U.S. such as the flag or coat of arms or of insignia of any State or foreign nation;
8. The mark consists of a name, portrait, or signature of a living person without their written consent; and
9. The mark is being used by or with the permission of the registrant so as to misrepresent the source of the goods or services.

Moreover, it should be noted that once a trademark registration is five years old, the registrant may file an Affidavit of Incontestability causing the mark to become incontestable under certain circumstances. However, Section 14 of the Lanham (the section that removes certain challenges as grounds for invalidating a registration) is not dependent on a registrant achieving incontestable status through the filing of an Affidavit under section 15 of the Lanham Act. Section 14 and 15 of the Lanham Act operate independently of each other.

It is not clear whether the fifth anniversary date of a trademark registration will fall into the initial five year period where no restrictions for asserting challenge grounds exists. However, there was a case before the Trademark Trial and Appeal Board where the Board held that the fifth anniversary date was deemed to be within the first five-year period. Therefore, any ground that could have been asserted against the registration initially could be grounds for the cancellation petition. It should also be noted that if the last day of the five-year period falls on a federal holiday or a Saturday or Sunday, then filing a Petition to Cancel on a Monday would be acceptable even if the Monday falls outside the five-year period.

If the registration you wish to cancel is on the Supplemental Register, rather than the Principal Register, then there are no restrictions pertaining to the grounds that can be asserted, even if the registration is over five years old. It is important to pay attention to the date of registration when you are seeking to invalidate trademark rights. We can assist you with determining which grounds may be appropriate to assert against a registration based on whether the registration is on the Principal or Supplemental Register and based on how many years have passed since the trademark registration issued. If you have any questions, please feel free to contact our office for a courtesy trademark consultation.