Trademark Petition for Cancellation (Abandonment) Template
This is a ready-to-file template for a Petition for Cancellation against a trademark for abandonment.
Sometimes you pick the perfect brand name, but there’s just one thing in the way: a trademark registration for a similar name and related goods/services, owned by a company that went out of business a couple of years ago. You can tell they went out of business because their website no longer works, or their Instagram hasn’t been updated in a long time, or maybe their website even says, “Bye everybody, we’re no longer in business!”
You feel that if you can just explain the circumstances to your USPTO examining attorney, they’ll have to approve your application. Unfortunately, it doesn’t work like that. The “dormant” trademark registration is still on the books and it’s not going to expire for another couple of years. This means your USPTO examiner will almost certainly have to reject your trademark application based on a likelihood of confusion with the existing trademark.
Fortunately, there’s a way to clear that idle trademark registration out of the way: filing a Petition for Cancellation against it. The argument is obvious: their trademark has been abandoned through non-use and possibly other actions like the dissolution of their LLC.
You don’t need to win in front of a judge. You just need the other side to fail to respond, causing you to win by default and the other side’s trademark registration to be cancelled. Because the owner of the trademark is not actively using it, they are very unlikely to spend the money to file an answer to your petition, if they even notice that a petition has been filed.
This Petition to Cancel template has been used several times by our partner law firm, JPG Legal, to successfully cancel several trademarks, including the name of a very well-known venture-backed company that raised tens of millions of dollars before collapsing. That brand name is now a registered trademark owned by JPG Legal’s client. Responses to these types of petitions for cancellation are very rare.
But even if you expect the other side not to respond to your petition, it’s important to include strong arguments. The stronger your arguments, the less likely your opponent is to pay a lawyer to file an answer. They’re not going to waste money filing an answer if their lawyer tells them their chances of success are low or uncertain.
This template includes a count of abandonment with several claims and arguments supporting it, citing relevant federal trademark law. Most claims of fact include the phrasing, “Upon information and belief,” which means you’re making a claim that may not be true, but that you believe might be true, once you have more information supplied by the other side.
For example, this template includes the statement that, upon information and belief, the other side has stopped using their trademark for a certain number of years, constituting prima facie evidence of abandonment. Even if you don’t know this to be true, you should include it if it could be true. If it’s not true, several other stipulations of fact are also made about the registered trademark, any one of which should be enough to cause their trademark to be cancelled if they fail to mount a proper response.
The template also includes statements explaining why you, the petitioner, have been harmed and will be harmed by the continued registration of the abandoned trademark.
This petition for cancellation is ready to submit. All you have to do is replace the placeholder wording throughout the document with the details of your case. For example, the names of the parties, the registration number of the trademark you want to cancel, and the goods/services the trademark is registered for. Other than that, the arguments in this template should work for pretty much any situation where you want to cancel a trademark for abandonment.
Microsoft Word Document (.docx). This file can be opened using the default software on Windows and Mac as well as Google Docs.
Legal Document Template
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