Nyman IP guide to Trademarks
Welcome to the online resource for learning about, applying for, and acquiring federal trademark registration. This site is made available to the public by the Nyman IP, a boutique law firm established by electrical patent lawyer, Scott Nyman. With a strong background in drafting and prosecuting high-quality trademark applications for his clients, Mr. Nyman hopes to share some of his experience with the public and answer questions that surround the complex process of applying for a U.S. trademark registration. As a patent lawyer, Scott also helps enforce trademarks registered by him and others. He is driven by a passion for intellectual property and technological curiosity.
The links and articles included on this website are provided to help a mark owner with ultimately filing a federal trademark application. This information is generally derived from trademark laws and regulations found in the Lanham Act, Title 15 of the United States Code (U.S.C.), and Title 37 of the Code of Federal Regulations (CFR). These materials, as well as the Trademark Manual of Examining Procedure (TMEP), are available at the USPTO’s website, at the Patent and Trademark Resource Centers (PTRCs), and at most law libraries.
United States Patent and Trademark Office (www.uspto.gov)
How do trademarks protect my brand?
The trademark registration process is generally divided into smaller processes that create a basic timeline from conception to registration. Not all the steps in the trademark timeline may be required, and an applicant’s timeline may differ depending on his or her specific needs. The process is summarized below, with a more detailed explanation being accessible by clicking on the title of each step in the process.
What is a trademark?
“Trademark” refers generally to the four types of marks that can be registered with the USPTO: trademarks, service marks, certification marks, and collective marks. Since registration confers essentially the same benefits for all types of marks, the term “trademark” is often used to generally apply to trademarks, service marks, certification marks, and collective marks.
A trademark includes any word, name, symbol, or device, or any combination used, or intended to be used, in commerce to identify and distinguish the goods of one manufacturer or seller from goods manufactured or sold by others, and to indicate the source of the goods. Trademarks are used by their owners to identify goods (physical commodities that are natural, manufactured, or produced) sold, otherwise transported, or distributed via interstate commerce. In short, a trademark is a brand name.
A service mark is any word, name, symbol, device, or any combination, used, or intended to be used, in commerce, to identify and distinguish the services of one provider from the services provided by others, and to indicate the source of the services. Service marks are used by their owners to identify services (intangible activities performed by one person for the benefit of others) for pay or otherwise.
A collective mark is any word, phrase, symbol or design, or a combination owned by a cooperative, an association, or other collective group or organization and used by its members to indicate the source of the goods or services. A collective membership mark is any word, phrase, symbol or design, or a combination which indicates that the user of the mark is a member of a particular organization. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a membership mark is to indicate membership, use of the mark is by members.
A certification mark is any word, phrase, symbol or design, or a combination owned by one party who certifies the goods and services of others when they meet certain standards. The owner of the mark exercises control over the use of the mark; however, because the sole purpose of a certification mark is to indicate that certain standards have been met, use of the mark is by others.
Certification marks and collective marks can be registered in the USPTO, but occur infrequently and have some different requirements for registration than the more commonly applied for trademarks and service marks.
How are trademarks different from copyrights?
A copyright is a form of protection provided to the authors of “original works of authorship” including literary, dramatic, musical, artistic, and certain other intellectual works, both published and unpublished. The 1976 Copyright Act generally gives the owner of copyright the exclusive right to reproduce the copyrighted work, to prepare derivative works, to distribute copies or phonorecords of the copyrighted work, to perform the copyrighted work publicly, or to display the copyrighted work publicly.
A copyright protects the form of expression rather than the subject matter of the writing. For example, a description of a machine could be copyrighted, but this would only prevent others from copying the description; it would not prevent others from writing a description of their own or from making and using the machine. Unlike trademarks, copyrights are registered by the Library of Congress’ Copyright Office.
Many successful businesses and individuals combine copyright, patent, and trademark protection to create a comprehensive intellectual property portfolio. For more information regarding the forms of intellectual property protection best suited to protect your needs, kindly contact Nyman IP at email@example.com or 312.724.9938.
What is “interstate commerce”?
For goods, “interstate commerce” generally involves sending the goods across state lines with the mark displayed on the goods or the packaging for the goods. With services, “interstate commerce” generally involves rendering a service to customers in another state or rendering a service that affects interstate commerce. Nonexclusive examples of services affecting interstate commerce include restaurants, gas stations, and hotels.
What is the deal with the TM, SM, and Circle-R (®) symbols?
Use of the TM and SM symbols may be governed by local, state, or foreign laws to claim rights to a mark. In the United States, the circle-R symbol (®) indicates federal registration and may be used only once the mark is actually registered in the USPTO. The federal registration symbol should only be used on goods or services that are the subject of the federal trademark registration. While a federal trademark application is pending, applicants should claim their rights using the TM and SM designations, as the circle-R cannot be used before the mark has actually become registered.
In summary, three important restrictions exist for use of the circle-R (®) symbol:
(1) The circle-R may only be used after the mark is registered. The circle-R may not be used use during the application process.
(2) The circle-R may only be used on or in connection with the goods and services listed in the federal registration.
(3) The circle-R may only be used while the registration is still alive. The circle-R may not be used if a federal registration expires, is canceled, or is otherwise not maintained.
Without federal registration, businesses and individuals may use the “TM” (trademark) or “SM” (service mark) designations to alert the public to a claim of a “common-law” mark. No registration is necessary to use a “TM” or “SM” symbol. In fact, the “TM” and “SM” symbols can be used even if the USPTO refuses to register a mark.
Why bother with federal trademark registration?
Federal registration is not required to establish rights in a trademark. Common law rights arise from actual use of a mark and may allow the common law user to successfully challenge a registration or application. However, federal registration on the Principal Register provides some very important benefits, such as:
Constructive notice nationwide of the trademark owner’s claim.
Evidence of ownership of the trademark.
Jurisdiction of federal courts may be invoked.
Registration can be used as a basis for obtaining registration in foreign countries.
Registration may be filed with U.S. Customs Service to prevent importation of infringing foreign goods.
Can I register the name of my band or musical group?
Generally, yes. A band name may function as a service mark for federal registration purposes, for example, if it is used to identify live performances.
May I assign or transfer the ownership of my trademark to someone else?
Yes. A registered mark may be assigned and a mark for which an application to register has been filed may be assignable. Certain exceptions exist concerning the assignment of Intent-to-Use applications. Assignments may be recorded in the USPTO for a fee.
Who may file a federal trademark application?
Only the owner of the trademark may file an application for registration. The owner controls the use of the mark, and controls the nature and quality of the goods to which it is affixed, or the services for which it is used. The owner may be an individual, corporation, partnership, LLC, or other type of legal entity.
The applicant of a federal trademark registration is not required to be a U.S. citizen. However, citizenship must be provided in the application. If an applicant has dual citizenship, then the applicant must indicate which citizenship will be printed on the certificate of registration.
How long will it take for my mark to register?
The total time for an application to be processed may be anywhere from almost a year to several years, depending on the basis for filing and the legal issues that may arise in the examination of the application.
Should I conduct a search for similar trademarks before filing an application?
It is advisable to conduct a search before filing your application. Registration of a mark by the U.S. Patent and Trademark Office is not guaranteed. A comprehensive trademark search allows a potential applicant to assess the trademark landscape for their proposed mark, providing insight to possible challenges with federal registration. Commissioning a comprehensive trademark search and option additionally allows a business or individual to identify and evaluate potential opposition or infringement issues, facilitating an informed decision as to whether to continue a branding strategy for a proposed mark. Nyman IP provides a comprehensive trademark search, analysis, and opinion package for clients desiring detailed knowledge of a proposed mark before embarking on extensive branding or marketing campaigns.
Can I apply for federal trademark registration if my mark is not presently being used in commerce?
In short, yes. A trademark application can be filed if a mark is being used, or intended to be used, in commerce to identify and distinguish the goods or services associated with the mark. The basic difference between “use” and “intent to use” is whether the mark is currently being used on all the goods/services for which registration is sought. If a mark is already used in commerce, a federal trademark application can be filed alleging “use in commerce.” If the mark is not yet used in commerce, but intend to be used in the future, a federal trademark application can be filed alleging “intent to use.” An “intent to use” basis will require additional forms and fees beyond that which is required for federal trademark applications alleging “use in commerce.”
What is an “intent-to-use” federal trademark application?
A party with a bona fide intention to use a specific mark in commerce in relation to specific goods or services may now file an application. However, before the mark will be registered, the applicant must use the mark in commerce in connection with the specified goods or services and submit specimens evidencing use and a verified allegation concerning that use. First, an intent-to-use application will be examined in relation to all substantive and procedural requirements, except use-related issues, and, if acceptable, published for opposition. If there is no opposition, or any opposition is resolved in the applicant’s favor, the applicant will receive a Notice of Allowance. The applicant must submit a Statement of Use within six months of that date, or request a six-month extension of time. The grant of such extensions is predicated, in part, upon the applicant’s showing of “good cause” as to why the mark has not yet been used.
How does an intent-to-use application differ from an application based upon use in commerce?
The primary difference between the two types of applications is the basis for filing. Because of that difference, the filing requirements and processing of the two types of applications differ. A party may not file an application based upon use of a mark in commerce until after that use has occurred. Instead of asserting a bona fide intent to use the mark in commerce, the use-based application must include allegations concerning dates of use and specimens evidencing use as a filing requirement. The use-based application will be examined and, if acceptable, published for opposition. If the mark is not opposed, or any opposition is resolved in the applicant’s favor, the mark will register. This procedure differs from the application procedure for an intent-to-use application, as noted above.
However, in all other respects the legal reasons for refusing registration (such as descriptiveness, likelihood of confusion, etc.) and the procedural requirements (such as specificity of identifications of goods, signature by applicant, etc.) are exactly the same for the two types of applications. Additionally, upon registration, the filing date of any application on the Principal Register is a constructive date of first use of the mark.
If I filed based on an “intent to use” the mark, when must I allege actual use of the mark in commerce?
An Allegation of Use must be filed either before the date the application is approved for publication or within six months after the Notice of Allowance is issued, unless a request for an extension of time is granted. The applicant has six months from the mailing date of the Notice of Allowance to file either a Statement of Use or an Extension Request.
If the applicant is using the mark in commerce on all of the goods/services listed in the Notice of Allowance, the applicant must submit a Statement of Use, specimen, and the required fee(s) within six months from the issue date for the Notice of Allowance to avoid abandonment.
If the applicant is not using the mark in commerce on all of the goods/services listed in the Notice of Allowance, the applicant must file an Extension Request and the required fee(s) to avoid abandonment. The applicant must continue to file extension requests every six months calculated from the issue date for the Notice of Allowance until a Statement of Use is filed. Only a limited number of extension requests may be filed before an applicant is required to file a Statement of Use to avoid abandonment.
Is federal registration of a trademark guaranteed?
No. An examining attorney at the U.S. Patent and Trademark Office will review the federal trademark application and may issue refusals based on the Trademark Act of 1946, 15 U.S.C. §1051 et seq., or the Trademark Rules of Practice, 37 C.F.R. Part 2. Common reasons for refusing registration are because the mark include likelihood of confusion with a mark in a registration or prior application, mere descriptiveness for the goods/services, a geographic term, surname, or a mark being ornamental as applied to the goods. The USPTO examining attorney may also issue requirements concerning, for example, goods and services listed in the application, description of the mark, quality of the drawing, and specimens provided.
Is federal registration of a trademark guaranteed?
Trademarks protect words, names, symbols, sounds, or colors that distinguish goods and services from those manufactured or sold by others and to indicate the source of the goods. Trademarks, unlike patents or copyrights, can be renewed forever as long as they are being used in commerce.
After a registration issues, to keep the registration “alive” or valid, the registration owner must file specific documents and pay fees at regular intervals. Failure to file these documents will result in the cancellation of the federal trademark registration.
What is the difference between the Principal Register and the Supplemental Register?
The Principal Register is a primary trademark register of the U.S. Patent and Trademark Office. When a mark has been registered on the Principal Register, the mark is entitled to all the rights provided by the Trademark Act.
The Supplemental Register is a secondary trademark register for the U.S. Patent and Trademark Office. The Supplemental Register allows for registration of certain marks that are not eligible for registration on the Principal Register but are capable of distinguishing an applicant’s goods or services. Marks registered on the Supplemental Register receive protection from conflicting marks and other protections, but are excluded from receiving certain advantages of the Trademark Act.
Registration common on the Supplemental Register permit a registrant to use the circle-R registration symbol (®), provides access to federal court for enforcement of the mark, is protected against registration of a confusingly similar mark under Trademark Act Section 2(d), and may serve as the basis for a filing in a foreign country under the Paris Convention and other international agreements. However, registration on the Supplemental Register does not convey legal presumptions of validity, ownership, and exclusive rights to use the mark, as afforded by registration on the Principal Register.
Do I have to verify with the U.S. Patent and Trademark Office that I am still using my mark to keep my registration?
Yes. A trademark owner must submit a Declaration of Continued Use within the filing window to maintain registration of a mark, as mandated under the Trademark Act, 15 U.S.C. §1058. A Declaration of Continued Use is a sworn statement filed by the owner of a registration that the mark is in use in commerce. In special cases, an owner may claim excusable nonuse of the mark by filing a Declaration of Excusable Nonuse. Untimely, incomplete, and noncompliant declarations will result in cancellation of a mark, removing the mark the register.
The owner of the registration must first file a Declaration of Use (or Excusable Nonuse) between the 5th and 6th years after the registration date, as mandated by 15 U.S.C. § 1058. If the declaration is accepted, the registration will continue in force for the remainder of the initial ten-year period from the registration date, unless cancelled by an order of the Commissioner for Trademark or a federal court. Subsequent Declarations of Use (or Excusable Nonuse) and an appropriate application for renewal must be filed between each 9th and 10th year following the registration date, continuing so long as maintenance of the registration is desired. In many cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
Declarations of Use are reviewed by trademark specialists in the Post-Registration Division of the U.S. Patent and Trademark Office. If the declaration is accepted, the USPTO will send a Notice of Acceptance to the owner. If the declaration is refused, the Office will send an Office Action stating the reasons for refusal and remedies available if any.
Will my registration be cancelled if I do not file the appropriate Declaration of Continued Use?
Yes. The U.S. Patent and Trademark Office will cancel any registration on either the Principal Register or the Supplemental Register if a timely declaration is not filed by the current owner of the registration during the prescribed time periods. The USPTO has no authority to waive or extend the deadline for filing a proper declaration. Registrations cancelled due to the failure to file a Declaration of Continued Use cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.
Do I have to renew my federal trademark Registration?
Yes. Subject to the filing of required declarations and applications for renewal, federal trademark registrations issued on or after November 16, 1989, remain in force for 10 years, and may be renewed for 10-year periods. Trademark registrations issued or renewed prior to November 16, 1989 remain in force for 20 years, and may be renewed for 10-year periods.
To renew a federal trademark registration, you must file an Application for Renewal under the Trademark Act, 15 U.S.C. §1059 in conjunction with a Declaration of Continued Use (or Excusable Nonuse). The owner must file a declaration asserting use or excusable nonuse and an application for renewal between each 9th and 10th years succeeding the registration date. See 15 U.S.C. § 1059. In some cases, the above documents will be accepted as timely if filed within six months after the deadlines listed above with the payment of an additional fee.
The USPTO has no authority to waive or extend the deadline for filing a proper renewal application. Registrations cancelled due to the failure to file a renewal application cannot be reinstated or “revived.” A new application to pursue registration of the mark again must be filed.
Renewal applications are reviewed by trademark specialists in the Post-Registration Division. If the renewal application is accepted, the USPTO will issue a notice granting the renewal. If the renewal is refused, the USPTO will send an Office Action stating the reasons for refusal and remedies available if any.
What makes a federal trademark registration incontestable?
An “incontestable” registration is conclusive evidence of the validity of the registered mark, of the registration of the mark, of the owner’s ownership of the mark and of the owner’s exclusive right to use the mark with the goods/services. The claim of incontestability is subject to certain limited exceptions set forth in §§15 and 33(b) of the Trademark Act, 15 U.S.C. §§1065 and 1115(b). Incontestability is asserted in a sworn statement filed by the owner of a mark registered on the Principal Register, claiming “incontestable” rights in the mark for the goods/services specified. Marks registered on the Supplemental Register are not eligible for claims of incontestable rights.
Riling of a Declaration of Incontestability is optional. An owner may choose to claim the benefits of incontestability by filing an appropriate declaration or may elect to retain the registration without those benefits. The term of the registration, for purpose of renewal, is not affected in either event.
When can I claim that my mark is incontestable?
A declaration claiming incontestable status may not be filed until the mark has been in continuous use in commerce for at least five consecutive years subsequent to the date of registration for marks registered under the Act of 1946 (and subsequent to the date of publication under §12(c) of the Trademark Act, 15 U.S.C. §1062(c), for marks registered under the Acts of 1905 and 1881 for which the benefits of the Act of 1946 have been claimed). Declarations asserting incontestability must be executed and filed within one year following a 5-year period of continuous use of the mark in commerce.
The USPTO neither examines the merits of declarations claiming incontestability nor “accepts” such declarations. However, the USPTO will review a declaration claiming incontestable status to determine whether it complies with statutory requirements. The USPTO will acknowledge receipt of only those declarations that meet all statutory requirements. Declarations for registrations issued under Section 69, 15 U.S.C. §1141i, may only be filed in accordance with the specific time requirements outlined in Section 73. 15 U.S.C. §1141m. Section 73 itself does not require a separate filing, but rather only establishes the time for filing.
Does the USPTO determine trademark infringement?
The USPTO examines trademark applications to determine if there is likelihood of confusion between the mark in the application and a previously registered trademark or another mark in a prior, pending application. If no conflict is found and all other statutory requirements are met, the examining attorney can approve the mark for publication. The USPTO has no powers of enforcement concerning the use of trademarks in the marketplace.
What if someone else is using my registered mark on related goods and services?
You may challenge use of your trademark by someone else in several ways, depending on the factual situation. You should consider contacting a law firm or attorney practicing in trademark law, such as Nyman IP at firstname.lastname@example.org or 312.487.2532. Time can be of the essence.
What are trademark monitoring and document filing services?
Applicants for federal trademark registration often receive unsolicited communications from companies requesting fees for trademark-related services, such as monitoring and document filing. Although solicitations from these companies frequently display customer-specific information, including USPTO serial number or registration number and owner name, companies that offer these services are not affiliated or associated with the USPTO or any other federal agency. Great caution should be exercised before paying any money to these solicitors. If you have hired a trademark attorney to assist with your federal trademark application, any correspondence you may receive directly (addressed to you, not your legal representative) should be treated with great suspicion.
Examination of my application is finished. What happens next?
After examination of an application is completed and the examining attorney determines that the mark is entitled to registration on the Principle Register, the mark is published in the Official Gazette of the USPTO for opposition. Once published, third parties can oppose registration of the mark within a limited window after the date of publication, or within an extension of time granted by the Board for filing an opposition. Marks that are found to be registrable on the Supplemental Register are registered when printed in the Official Gazette. Marks registered on the Supplemental Register cannot be opposed, but are still subject to cancellation.
How can a third party oppose registration of my mark?
Any person who believes that he or she would be damaged by the registration of a mark on the Principal Register may oppose registration by filing a notice of opposition. The notice of opposition is required to include a concise statement of the reasons for the opposer’s belief that the opposer would be damaged by the registration of the opposed mark, and must state the grounds for opposition. Two or more persons may join in an opposition, and related companies are considered separate persons for the purpose of filing an opposition.
How long do third parties have to oppose my registration?
An opposition must be filed within thirty days after the date of publication in the Official Gazette, or within an extension period granted by the Board. This time within which to file an opposition is set by statute and may not be extended or waived.
What happens if a third party opposes registration of my mark?
Typically, an opposition proceeding is initiated before the Trademark Trial and Appeal Board (“TTAB” or “Board”). An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations that are in conflict) is entitled to registration. See 15 U.S.C. §§1066, 1068.
An interference can be declared only upon petition to the Director. However, the Director will grant such a petition only if the petitioner can show extraordinary circumstances that would result in a party being unduly prejudiced in the absence of an interference. 37 C.F.R. §2.91(a). The availability of an opposition or cancellation proceeding ordinarily precludes the possibility of undue prejudice to a party. Thus, a petitioner must show that there is some extraordinary circumstance that would make the remedy of opposition or cancellation inadequate or prejudicial to the party’s rights. Interferences are generally limited to situations where a party would otherwise be required to engage in successive or a series of opposition or cancellation proceedings, and where the issues are substantially the same. See In re Family Inns of Am., Inc., 180 USPQ 332 (Comm’r Pats. 1974).
The following matters are not subject to interference: (1) registrations on the Supplemental Register; (2) applications for registration on the Supplemental Register; (3) registrations under the Act of 1920; and (4) registrations of marks that have become incontestable.
How is an opposition proceeding different than examination of the trademark application?
Proceedings before the Trademark Trial and Appeal Board (“TTAB” or “Board”) are generally more formal than trademark examination. For example, Board proceedings often require formal pleadings, discovery, motion proctice, briefs, and binding judgements.
Board proceedings are governed by the Lanham Trademark Act of 1946, the rules of practice in trademark cases (commonly known as the Trademark Rules of Practice), the rules pertaining to assignments in trademark cases, and the rules relating to the conduct of practitioners and the representation of others before the United States Patent and Trademark Office (“USPTO” or “Office”). The USPTO rules governing procedure in inter partes proceedings before the Board are adapted, in large part, from the Federal Rules of Civil Procedure, with modifications due primarily to the administrative nature of Board proceedings.
Proceedings before the Board are also governed, to a large extent, by precedential decisions in prior cases. These decisions include those of the Board itself, as well as the decisions of the Court of Appeals for the Federal Circuit (“Federal Circuit”) (which determines appeals from decisions of the Board); the Court of Customs and Patent Appeals (predecessor of the Court of Appeals for the Federal Circuit); and the Director of The United States Patent and Trademark Office (formerly the Commissioner of Patents and Trademarks) (“Director”), who determines petitions seeking review of Board actions on procedural matters. The Board relies primarily on precedent from the Court Appeals for the Federal Circuit, not only because the Federal Circuit is the Board’s primary reviewing court, but also because its cases address registration issues more specifically.
Does the Trademark Trial and Appeal Board handle other types of proceedings?
The Board has jurisdiction over four types of inter partes proceedings, namely, oppositions, cancellations, interferences, and concurrent use proceedings.
An opposition, as discussed above, is a proceeding in which the plaintiff seeks to prevent the issuance of a registration, in whole or in part, of a mark on the Principal Register. “Any person who believes that he would be damaged by the registration of a mark” may file an opposition thereto, but the opposition may be filed only as a timely response to the publication of the mark, in the Official Gazette of the United States Patent and Trademark Office.
A cancellation proceeding is a proceeding in which the plaintiff seeks to cancel an existing registration, in whole or in part, of a trademark on the Principal Register or the Supplemental Register. A petition for cancellation may only be filed after the issuance of the registration. A petition for cancellation may be filed by “any person who believes that he is or will be damaged by the registration” of the mark.
An interference is a proceeding in which the Board determines which, if any, of the owners of conflicting applications (or of one or more applications and one or more registrations which are in conflict), is entitled to registration. The proceeding is declared by the Office only upon petition to the Director showing extraordinary circumstances therefor, that is, that the party who filed the petition would be unduly prejudiced without an interference. Ordinarily, the availability of an opposition or cancellation proceeding is deemed to prevent any undue prejudice from the unavailability of an interference proceeding. An interference that has been declared by the Director is not instituted by the Board until after all of the marks that are to be involved in the proceeding have been published in the Official Gazette for opposition.
A concurrent use proceeding is a proceeding in which the Board determines whether one or more applicants is entitled to a concurrent registration on the Principal Register, that is, a registration with conditions and limitations, fixed by the Board, as to the mode or place of use of the applicant’s mark or the goods and/or services on or in connection with which the mark is used (usually, a concurrent registration is restricted as to the territory which it covers). The proceeding may be initiated only through the filing of an application for registration as a lawful concurrent user, and is instituted by the Board only after each of the one or more involved applications has been published for opposition in the Official Gazette, and all oppositions thereto (if any) have been withdrawn or dismissed.
The Board also has jurisdiction over ex parte appeals, that is, appeals from an examining attorney’s final refusal to register a mark in an application.
I have a federal trademark registration. Does that mean my mark is safe from proceedings before the Trademark Trial and Appeal Board?
In some circumstances, even federally registered marks may be challenged through a cancellation proceeding. Any person who believes that he, she or it is or will be damaged by a registration may file a petition to the Trademark Trial and Appeal Board for cancellation of the registration in whole or in part. Cancellation proceedings are similar to other proceedings before the Board, following many of the same formalities. If the third party is successful and the TTAB issues an order granting the cancellation of the registered extension of protection, the USPTO will cancel the registration in due course. Invalidation may also occur pursuant to an order of a federal court of the United States cancelling the registered extension of protection. Such order may result from, for example, infringement proceedings involving the holder and a third party, or the disposal of the holder’s assets. The USPTO will cancel the registration pursuant to the court order.