Cancellation is the trademark system's mechanism for cleaning the register. Under Section 14 of the Lanham Act, 15 U.S.C. § 1064, a party who believes it is or will be damaged by a registration may petition the Trademark Trial and Appeal Board (TTAB) to cancel it. The Board decides only the right to register—not the right to use, not infringement, and it awards no damages. This checklist takes you from venue selection through prosecution. For cancellation as a counterclaim in court under 15 U.S.C. § 1119, see Trademark Cancellation in Federal Litigation; for the discovery phase, see the TTAB Discovery Checklist.

Phase 1 — Choose the venue

  • Decide among the three venues: a TTAB cancellation petition (§ 1064); cancellation as a counterclaim in district court (§ 1119, which must ride along with an independent controversy); or the USPTO's ex parte expungement/reexamination for pure nonuse.
  • For a clean nonuse complaint, evaluate the Trademark Modernization Act routes (expungement: never used in commerce on some/all goods; reexamination: not in use as of a relevant date) — cheaper, faster, examiner-driven, no adverse party.
  • If there is a live infringement dispute, consider whether a § 1119 counterclaim in court is better (it can also resolve use, damages, and injunctions).
  • Anticipate parallel-proceeding coordination (stays, primary jurisdiction) if both a court case and a Board proceeding exist.

WHY / traps. Section 1119 is not a freestanding grant of jurisdiction—you cannot file a suit whose only purpose is cancellation. For a pure "they never used it" complaint, expungement is often far cheaper than a full Board fight. Choose deliberately: under B&B Hardware, a Board determination can have issue-preclusive effect in later litigation, so the TTAB is not a low-stakes warm-up.

Phase 2 — Check age, status, and available grounds

  • Determine the registration's age and whether it is incontestable (Section 15 filed after five years of continuous use).
  • If within five years and contestable, the full menu is open: likelihood of confusion (priority + § 2(d)), mere descriptiveness without secondary meaning, primarily merely a surname, geographic descriptiveness/misdescriptiveness, deceptiveness, false suggestion of a connection, and dilution.
  • If incontestable, limit to the anytime grounds: genericness, functionality, abandonment, fraud, misrepresentation of source, and nonuse (including the § 1064(6) nonuse ground for registrations at least three years old).
  • Do not plead grounds the Constitution has gutted: the disparagement bar (struck in Matal v. Tam, 582 U.S. 218 (2017)) and the immoral/scandalous bar (struck in Iancu v. Brunetti, 588 U.S. 388 (2019)).
  • If a vulnerable registration is young, move promptly before the five-year window closes on registrability grounds.

WHY / traps. The first analytical task is matching grounds to timing—incontestability removes the "weaker," registrability-based grounds (chiefly mere descriptiveness and surname) but leaves the fundamental grounds available at any time. Keep three theories distinct: nonuse (never used / not in use as of a date), abandonment (use discontinued with intent not to resume; three years' nonuse is prima facie evidence), and fraud (a knowing, deceptive, material lie). They have different elements and burdens.

Phase 3 — Confirm entitlement and develop the grounds

  • Confirm entitlement to a statutory cause of action: a real interest and a reasonable belief in damage (post-Lexmark/Corcamore; the former "real interest" test).
  • Identify your stake (confusingly similar mark, prior use, blocked application, or desire to use a locked-up descriptive/generic term).
  • For abandonment, gather proof of three-plus consecutive years of nonuse to trigger the presumption and anticipate the registrant's intent-to-resume rebuttal.
  • For genericness, assemble dictionary, media, competitor, and the registrant's own usage—and consider a Teflon-format survey of the public's primary significance.
  • For functionality, line up evidence the feature is essential to use/purpose or affects cost/quality (an expired utility patent is strong evidence under TrafFix).
  • For fraud, secure genuine evidence of a knowing, material misrepresentation made with intent to deceive—and plead it with Rule 9(b) particularity.
  • For intent-to-use registrations, investigate both the absence of bona fide intent at filing (M.Z. Berger) and any improper pre-use assignment.

WHY / traps. Entitlement is liberally construed but is a real element—articulate it or risk dismissal. Two big traps: (1) a "they barely used it" theory is weak because the use-in-commerce bar is famously low (Christian Faith Fellowship—two hats sufficed); the stronger attack is genuine abandonment. (2) Fraud rarely succeeds after In re Bose: negligence and even gross negligence are not enough, the standard is clear-and-convincing "to the hilt," and overclaiming goods usually yields restriction, not cancellation.

Phase 4 — Plead and file

  • Draft a petition to cancel meeting Fed. R. Civ. P. 8: a short, plain statement of entitlement and of each ground.
  • Identify the target registration by number and the goods/services and classes challenged.
  • Plead each ground as a separate count with supporting allegations; plead fraud with particularity.
  • File through ESTTA and pay the per-class fee (confirm the current amount).
  • For TMA routes instead, file the expungement or reexamination petition with the required evidence of nonuse and a reasonable investigation.

WHY / traps. The petition is a pleading, not a brief—merits evidence comes later via testimony and notice of reliance. Lead with objective grounds (genericness, functionality, abandonment) that can be won on summary judgment; treat fraud as a trial issue (deceptive intent is rarely resolvable on a paper record).

Phase 5 — Prosecute the proceeding

  • Calendar the institution order dates: discovery conference, discovery period, disclosures, and testimony periods.
  • Hold the mandatory discovery conference and serve initial disclosures before seeking discovery.
  • Build the record under the TTAB Discovery Checklist, mapping each ground to specific requests.
  • Introduce evidence at trial by testimony declaration/deposition and notice of reliance.
  • Consider summary judgment on objective grounds where the material facts are undisputed.
  • Track the matter on TTABVUE and confirm the registrant's answer (default risks judgment).

WHY / traps. There is no live trial—discovery admissions and documents are much of the record. Remember the partial-relief option: the Board (like a court under § 18, 15 U.S.C. § 1068) can restrict a registration to the goods actually used rather than cancel it outright, which dovetails with the Bose overclaiming remedy.

Common mistakes

  • Filing a TTAB petition when a § 1119 court counterclaim (with damages and an injunction) would serve better—or vice versa.
  • Pleading registrability grounds against an incontestable registration.
  • Betting the case on fraud rather than a provable abandonment or nonuse theory.
  • Running a "barely used it" argument against the low use-in-commerce bar.
  • Pleading constitutionally dead grounds (disparagement, scandalous).
  • Failing to articulate entitlement, inviting early dismissal.
  • Missing the cheaper TMA expungement/reexamination route for pure nonuse.

Primary authority

  • Statutes: Lanham Act § 14, 15 U.S.C. § 1064 (cancellation grounds; § 1064(6) nonuse); § 18, 15 U.S.C. § 1068 (restriction); § 37, 15 U.S.C. § 1119 (court cancellation); incontestability, 15 U.S.C. §§ 1065, 1115(b); §§ 1067–1071 (TTAB authority/review); abandonment definition, 15 U.S.C. § 1127.
  • Rules: 37 C.F.R. Part 2 — §§ 2.111–2.118 (cancellations), 2.120 (discovery); TMA expungement/reexamination rules.
  • TBMP: Trademark Trial and Appeal Board Manual of Procedure (Ch. 300 pleadings; Ch. 400 discovery).
  • Cases: In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009) (fraud); Christian Faith Fellowship Church v. adidas AG, 841 F.3d 986 (Fed. Cir. 2016) (use in commerce); TrafFix Devices, Inc. v. Mktg. Displays, Inc., 532 U.S. 23 (2001) (functionality); M.Z. Berger & Co. v. Swatch AG, 787 F.3d 1368 (Fed. Cir. 2015) (bona fide intent); Matal v. Tam, 582 U.S. 218 (2017); Iancu v. Brunetti, 588 U.S. 388 (2019); B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015).
  • Systems: ESTTA and TTABVUE at uspto.gov.

Verify current TBMP guidance, 37 C.F.R. Part 2, and fees before filing.

Related resources

This checklist is general information, not legal advice. Cancellation depends on the registration's age, status, and available grounds; consult qualified trademark counsel.