TTAB Oppositions and Cancellations

Common situations.

• A competitor's application for a similar mark has just been published.
• An old registration for a mark that was never used blocks a company's own application.
• A company's application is opposed by a larger brand.
• A Board case and a lawsuit over the same marks are pending at the same time.

The proceedings.

Extensions to oppose. A first request may seek 30 days, granted on request, or 90 days for good cause. After that come a 60-day extension for good cause and one final 60-day extension. No extension may run past 180 days after publication (37 C.F.R. § 2.102(c)).

Expungement and reexamination. These proceedings, added by the Trademark Modernization Act of 2020, start with a petition supported by a verified statement describing a reasonable investigation of nonuse. They are limited to nonuse, but they are usually faster and cheaper than a contested cancellation. The Office reports that they take about 4.5 to 12 months, compared with four months to three years for a Board trial case.

Grounds.

• Within five years after registration (and in any opposition): any ground that would have barred registration, including likelihood of confusion with an earlier mark (§ 1052(d)), descriptiveness (§ 1052(e)(1)), dilution, lack of use or of a bona fide intent to use, and fraud.
• At any time (§ 1064(3), (6)): genericness, functionality, abandonment, fraud in obtaining the registration, misrepresentation of source, and, three years or more after registration, that the mark has never been used for some or all of the listed goods or services.
• After five years, a registration can no longer be cancelled for likelihood of confusion or descriptiveness.

Who may file. An opposer or petitioner must show an interest within the zone of interests the statute protects and a reasonable belief of damage proximately caused by the registration, under the framework of Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014) (Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020)). A competitor whose own application was refused because of the registration usually qualifies. Any person may petition for expungement or reexamination.

Fraud. A party claiming fraud must prove that the applicant or registrant knowingly made a false, material statement with intent to deceive the Office (In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009)). A false declaration filed only to obtain incontestable status is not a ground for cancelling the registration itself (Great Concepts, LLC v. Chutter, Inc., No. 2022-1212 (Fed. Cir. Oct. 18, 2023)).

How a Board case runs.

1. Filing. The opposer or petitioner files through the Board's electronic system, and the Board sets a schedule.
2. Answer. Due on the date in the Board's order.
3. Discovery. A discovery conference, initial disclosures, and discovery under rules that largely track the Federal Rules of Civil Procedure.
4. Trial periods. Each side presents testimony and evidence in turn, usually by declaration and deposition, on a written record. There is no live trial.
5. Briefs and hearing. Written briefs, and an oral hearing if requested.
6. Decision. A written decision sustaining or dismissing the claims.

The parties may agree to accelerated case resolution, in which the Board decides the case on a shortened record.

How the Board decides confusion.

The Board weighs the factors listed in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). They overlap with the Fifth Circuit's digits of confusion, but one difference matters: the Board compares the goods and services as they are described in the application and registration, not as the parties actually sell them (Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937 (Fed. Cir. 1990)). A company that sells only to specialists cannot rely on that fact if its application describes its goods broadly. See Likelihood of Confusion in the Fifth Circuit.

Effect on court cases.

• Suspension. The Board ordinarily suspends its case when a lawsuit between the parties may decide it (37 C.F.R. § 2.117(a)).
• Preclusion. A Board finding on likelihood of confusion can bind a court in a later infringement case if the ordinary elements of issue preclusion are met and the uses the Board considered are materially the same as those before the court (B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015)). Because the Board looks at written descriptions rather than actual use, that condition is often, but not always, missing. Parties should treat a Board case as a possible preview of the lawsuit.
• Courts can act on registrations too. In any case involving a registered mark, a court may order a registration cancelled or restored, or otherwise correct the register (§ 1119).

Review of a Board decision.

A party dissatisfied with a final decision has two routes. Either must be taken within 63 days after the decision (37 C.F.R. § 2.145(d)).

What the Board cannot do.

• Award damages or profits.
• Order a party to stop using a mark.
• Decide whether a mark is infringed.

It can refuse or cancel a registration, or restrict the goods and services it covers (§ 1068).

Sources.

• 15 U.S.C. §§ 1052, 1063, 1064, 1066a, 1066b, 1068, 1071, 1119.
• 37 C.F.R. §§ 2.102, 2.117, 2.145.
• USPTO, Requesting an Expungement or Reexamination Proceeding.
• Lexmark Int'l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014).
• Corcamore, LLC v. SFM, LLC, 978 F.3d 1298 (Fed. Cir. 2020).
• In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009).
• Great Concepts, LLC v. Chutter, Inc., No. 2022-1212 (Fed. Cir. Oct. 18, 2023).
• In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973).
• Octocom Sys., Inc. v. Houston Computer Servs., Inc., 918 F.2d 937 (Fed. Cir. 1990).
• B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015).

This guide is general information, not legal advice. Law checked through October 21, 2026. See the Disclaimer.