Trademark Invalidity: Grounds to Cancel a Registration

What Makes a Trademark Invalid?

A registration on the federal Principal Register is presumed valid, so a business attacking one must prove a specific defect that fits a recognized ground. The owner of a mark the USPTO refused to register gets no presumption and must prove its mark is protectable.

Under 15 U.S.C. § 1115(a), “a mark registered on the principal register provided by this chapter and owned by a party to an action shall be admissible in evidence and shall be prima facie evidence of the validity of the registered mark,” but the registration “shall not preclude another person from proving any legal or equitable defense or defect” in the mark or its registration. A Minnesota certificate is “prima facie evidence of registrant’s ownership and exclusive right to use the mark on or in connection with the goods or services described in the certificate,” under Minn. Stat. § 333.21 subd. 2.

A refused mark starts from the other side. The Eighth Circuit, which hears federal appeals from Minnesota, addressed a mark the USPTO had refused to register in Schwan’s IP, LLC v. Kraft Pizza Co., 460 F.3d 971 (8th Cir. 2006). The court held: “Because the PTO denied Schwan’s application to register the Brick Oven mark, there is no presumption of the mark’s validity, and Schwan’s bears the burden of establishing that the mark is protectible under trademark law.”

The grounds that can defeat a mark, each covered below:

• Generic: the term names the kind of product rather than one company’s product.
• Merely descriptive: the term describes the product and buyers have not come to see it as a brand.
• Functional: the feature claimed as a mark is essential to the product’s use or purpose, or affects its cost or quality.
• Abandoned: the owner stopped using the mark with no intent to resume, or let it lose its meaning.
• Fraud or nonuse: the registration was obtained by a knowing, material false statement made with intent to deceive the USPTO, or the mark was never used for some listed goods.
• Statutory bars: the mark contains deceptive matter, falsely suggests a connection with a person, or uses a living person’s name without consent.
• Prior rights: the mark is likely to cause confusion with an earlier mark.
• Minnesota registrations: the grounds in Minn. Stat. § 333.25, including that the registrant does not own the mark.

How Does a Trademark Become Generic?

A trademark is generic when the public understands it as the name of the product itself rather than the name of one company’s product. A generic term cannot be registered or kept, and a federal registration can be cancelled on that ground at any time, even after it becomes incontestable.

15 U.S.C. § 1064(3) allows a petition “At any time if the registered mark becomes the generic name for the goods or services, or a portion thereof, for which it is registered,” with no waiting period. The statute sets the test in its own words: “The primary significance of the registered mark to the relevant public rather than purchaser motivation shall be the test for determining whether the registered mark has become the generic name of goods or services on or in connection with which it has been used.” A challenger can also target only part of a registration.

That partial route reads: “If the registered mark becomes the generic name for less than all of the goods or services for which it is registered, a petition to cancel the registration for only those goods or services may be filed.” Incontestability does not protect a generic name. Under 15 U.S.C. § 1065, “no incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.”

Consumer understanding decides the question. The Supreme Court took up a “generic.com” term in U.S. Patent & Trademark Office v. Booking.com B. V., 591 U.S. 549 (2020). It held that whether such a term is generic “depends on whether consumers in fact perceive that term as the name of a class,” and it rejected a near-automatic rule against those terms. The Court listed consumer surveys, dictionaries, and usage by consumers and competitors as evidence that can inform that inquiry.

In Schwan’s, an appeal from the District of Minnesota, the Eighth Circuit held Brick Oven generic for pizza and affirmed summary judgment for the competitor Schwan’s had sued. The court reasoned that “A generic term can never function as a trademark because it refers to the common name or nature of the article,” and it relied on the record before it. That record included “newspapers and other publications, generic use by competitors,” and the claimant’s own descriptions of its pizza.

Timing matters at the registration stage. In Bullshine Distillery LLC v. Sazerac Brands, LLC, 130 F.4th 1025 (Fed. Cir. 2025), a challenger argued a term generic in the past stayed generic forever. On that question, which the court called one of first impression, it agreed with the argument that “the correct time period to assess if a mark was generic is at the time of registration” and rejected the forever-generic view. It also noted that “Even a mark that has attained incontestable status can still be challenged on the basis of genericness,” and it affirmed the Trademark Trial and Appeal Board’s (TTAB) finding that the mark was not generic.

When Does Descriptiveness Defeat a Trademark?

A descriptive mark names a quality, ingredient, or feature of the product, and it can be registered on the Principal Register only after buyers come to see it as a brand. A petition to cancel a registration on this ground is limited in time, and descriptiveness ends entirely as a challenge once the registration becomes incontestable.

15 U.S.C. § 1052(e) bars a mark that “when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them,” unless an exception applies. Section 1052(f) supplies the cure for that bar: “Except as expressly excluded in subsections (a), (b), (c), (d), (e)(3), and (e)(5) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce.” Proof of acquired distinctiveness under Section 2(f) is a separate subject.

Descriptiveness is not among the grounds § 1064(3) allows at any time, so a petition to cancel on that ground falls under § 1064(1): “Within five years from the date of the registration of the mark under this chapter.” I suggest checking the current text of § 1064 before relying on that period, because Congress amends it.

Incontestability closes the door. The Supreme Court decided an infringement suit by the owner of an incontestable registration in Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189 (1985). It concluded “that the holder of a registered mark may rely on incontestability to enjoin infringement and that such an action may not be defended on the grounds that the mark is merely descriptive.” The same opinion explains that “before a mark becomes incontestable an opposing party may prove any legal or equitable defense which might have been asserted if the mark had not been registered.” The Court reversed and sent the case back, leaving the defendant’s prior-use and likelihood-of-confusion defenses for the lower court.

Challengers can pair grounds. Once, a business that had received a petition to cancel its registration asked me to defend it. The petition paired likelihood of confusion with descriptiveness, and the business’s first priority was keeping the business lines that used the mark running, so coexistence was part of the strategy from the first reply.

What Makes a Feature Functional and Unprotectable?

A product feature is functional, and cannot be a trademark, if the feature is essential to the product’s use or purpose or if it affects the product’s cost or quality. Functionality is a bar to registration, a ground for cancellation at any time, and a defense even against an incontestable registration.

The Lanham Act states it three ways. 15 U.S.C. § 1052(e) bars a mark that “comprises any matter that, as a whole, is functional,” and § 1064(3) allows cancellation at any time if the registered mark “is functional,” with no waiting period. 15 U.S.C. § 1115(b)(8) keeps “That the mark is functional” as a defense to an incontestable registration.

Unregistered trade dress carries its own burden rule. Under 15 U.S.C. § 1125(a)(3), “the person who asserts trade dress protection has the burden of proving that the matter sought to be protected is not functional” when the trade dress is not registered on the principal register.

The Supreme Court supplied the test. TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001) involved unregistered trade dress on a road-sign stand. The Court repeated its earlier rule that a feature is functional when it is “essential to the use or purpose of the article or if it affects the cost or quality of the article,” so a feature that only improves quality can qualify. The design had been claimed in utility patents that had since expired, and the Court held that “A utility patent is strong evidence that the features therein claimed are functional” before reversing the appellate decision that had favored the trade dress owner. More on when a design element is functional is on a separate page.

The owner’s own files can supply the evidence of functionality. Before a business files for a color or a shape, I suggest that someone read its sales materials the way an opposing lawyer will. Advertising that sells a feature for what it does, rather than for who made it, is evidence that the feature affects the product’s quality.

What Counts as Abandonment of a Trademark?

A mark is abandoned when its owner stops using it with no intent to resume, or when the owner’s conduct causes it to lose its meaning as a brand. Abandonment is a ground for cancellation at any time and a defense even against an incontestable registration.

15 U.S.C. § 1127 defines both forms. The first is use “discontinued with intent not to resume such use,” and the statute allows that intent to be inferred from circumstances. It adds a presumption, “Nonuse for 3 consecutive years shall be prima facie evidence of abandonment,” which the owner can try to rebut with evidence of an intent to resume.

The second form is “any course of conduct of the owner, including acts of omission as well as commission,” that causes the mark to become generic “or otherwise to lose its significance as a mark,” as § 1127 puts it. Minnesota uses the same two forms for marks registered under its own act. Its presumption for those marks, under Minn. Stat. § 333.18 subd. 6, is that “Nonuse for two consecutive years constitutes prima facie evidence of abandonment” of the mark.

A registration can also be lost without any abandonment. Under 15 U.S.C. § 1058(a), “the registration of any mark shall be canceled by the Director unless the owner of the registration files in the United States Patent and Trademark Office affidavits that meet the requirements of subsection (b)” within the statutory windows. The consequences of missed Section 8 filings are covered separately.

Licensing turns on control. 15 U.S.C. § 1055 covers a mark that “may be used legitimately by related companies,” and provides that “such use shall not affect the validity of such mark or of its registration, provided such mark is not used in such manner as to deceive the public.” Section 1127 defines a related company as one whose use “is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used,” and a license with no real control leaves the licensee’s use outside that definition.

Transfers have their own rule. Under 15 U.S.C. § 1060(a)(1), a mark “shall be assignable with the good will of the business in which the mark is used, or with that part of the good will of the business connected with the use of and symbolized by the mark.” The risks of an assignment in gross, a transfer of the name without the goodwill behind it, are covered separately.

How Does Fraud or Nonuse Void a Registration?

A federal registration obtained by a knowing, material false statement made to deceive the USPTO can be cancelled at any time. So can a registration covering goods or services on which the mark was never used, through a petition to the TTAB or a USPTO procedure.

Section 1064(3) allows cancellation at any time if the registration “was obtained fraudulently,” and § 1115(b)(1) keeps fraud as a defense to an incontestable registration. That defense covers a showing “That the registration or the incontestable right to use the mark was obtained fraudulently.” In Great Concepts, LLC v. Chutter, Inc., 90 F.4th 1333 (Fed. Cir. 2023), the Federal Circuit reversed a TTAB cancellation resting on a fraudulent incontestability filing, concluding “that Section 14 does not authorize the Board to cancel a registration based on a fraudulent Section 15 declaration” (Section 14 is § 1064). It sent the case back for the Board to consider whether the mark keeps its incontestable status.

The standard comes from In re Bose Corp., 580 F.3d 1240 (Fed. Cir. 2009), where a renewal filing had claimed use on goods the company no longer sold. The court held “that a trademark is obtained fraudulently under the Lanham Act only if the applicant or registrant knowingly makes a false, material representation with the intent to deceive the PTO.” It added that “There is no fraud if a false misrepresentation is occasioned by an honest misunderstanding or inadvertence without a willful intent to deceive,” then reversed the TTAB’s cancellation and sent the case back so the registration could be limited to the goods still sold. The routes for challenging a bad faith trademark filing build on the same rules.

Nonuse has its own ground. Section 1064(6) allows a petition “At any time after the 3-year period following the date of registration, if the registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration,” which targets goods and services listed but never used. As with § 1064(1), I suggest checking the current text before relying on that waiting period, because Congress amends the statute.

Two USPTO procedures reach the same problem without a full TTAB case. Under 15 U.S.C. § 1066a, “any person may file a petition to expunge a registration of a mark on the basis that the mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration,” as the statute puts it. Under 15 U.S.C. § 1066b, a reexamination petition targets a mark that “was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date,” a date the statute defines. Each statute sets a filing window measured from the registration date, and each petition must state “the elements of the reasonable investigation the petitioner conducted” in a verified statement.

Which Registration Bars Still Apply After Registration?

Some of the reasons the USPTO refuses a mark can also cancel it later. Deceptive matter, a false suggestion of a connection with a person or institution, government insignia, and a living person’s name used without consent can be raised at any time, while a petition to cancel for likelihood of confusion with an earlier mark is time-limited.

Section 1064(3) allows cancellation at any time if the registration was obtained “contrary to the provisions of section 1054 of this title or of subsection (a), (b), or (c) of section 1052 of this title for a registration under this chapter,” the provisions that follow. Section 1052(a) bars a mark that “Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute,” and § 1052(b) covers government flags and insignia.

The Supreme Court has held two parts of § 1052(a) unconstitutional. Of the disparagement clause, it wrote in Matal v. Tam, 582 U.S. 218 (2017): “We now hold that this provision violates the Free Speech Clause of the First Amendment.” Of the immoral-or-scandalous bar, it wrote in Iancu v. Brunetti, 588 U.S. 388 (2019): “We hold that this provision infringes the First Amendment for the same reason: It too disfavors certain ideas.” The bars on deceptive matter and false suggestion of a connection were not before the Court in either case.

The names bar survived its challenge. Section 1052(c) bars a mark that “Consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent,” and the Court upheld it in Vidal v. Elster, 602 U.S. 286 (2024). The Court’s words were: “Elster contends that this prohibition violates his First Amendment right to free speech. We hold that it does not.”

Likelihood of confusion follows a different clock. Section 1052(d) bars a mark that “Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive,” subject to a proviso for lawful concurrent users. That ground is not on the § 1064(3) list, so a petition to cancel on it falls under the time limit in § 1064(1) discussed above.

Dilution of a famous mark is a separate basis. The last paragraph of § 1052 provides that “A registration for a mark which would be likely to cause dilution by blurring or dilution by tarnishment under section 1125(c) of this title, may be canceled pursuant to a proceeding brought under either section 1064 of this title or section 1092 of this title,” which routes dilution through those two cancellation sections.

How Does Incontestability Change Which Grounds Remain?

Incontestability makes a federal registration conclusive evidence of validity, subject to the defenses § 1115(b) lists, and it removes descriptiveness as an attack. Genericness, functionality, abandonment, fraud, the § 1052(a) to (c) bars, and the other grounds § 1064 allows at any time survive it.

Under 15 U.S.C. § 1065, “Except on a ground for which application to cancel may be filed at any time under paragraphs (3), (5), and (6) of section 1064 of this title,” the owner’s right becomes incontestable. The statute describes that right as “the right of the owner to use such registered mark in commerce for the goods or services on or in connection with which such registered mark has been in continuous use for five consecutive years subsequent to the date of such registration and is still in use in commerce,” subject to listed conditions that include a filed affidavit, no adverse final decision, and no pending proceeding.

The same section protects a prior user’s state-law rights. The incontestable right does not apply “to the extent, if any, to which the use of a mark registered on the principal register infringes a valid right acquired under the law of any State or Territory by use of a mark or trade name continuing from a date prior to the date of registration under this chapter of such registered mark,” in the statute’s words. Section 1115(b)(5) also keeps a defense for a mark “adopted without knowledge of the registrant’s prior use” and used continuously since before the dates it lists, “Provided, however, That this defense or defect shall apply only for the area in which such continuous prior use is proved.”

Under § 1115(b), “the registration shall be conclusive evidence of the validity of the registered mark,” subject to listed defenses. They include fraud, abandonment, “That the mark is functional,” and “That equitable principles, including laches, estoppel, and acquiescence, are applicable,” among others.

Park ‘N Fly shows the effect on descriptiveness, and Bullshine shows the limit, noting that “Even a mark that has attained incontestable status can still be challenged on the basis of genericness” under the statute. Equitable defenses run in both directions. Under 15 U.S.C. § 1069, “In all inter partes proceedings equitable principles of laches, estoppel, and acquiescence, where applicable may be considered and applied,” so a registrant can raise a challenger’s long delay against it.

Before relying on a registration’s age, I suggest checking the USPTO record for whether a Section 15 declaration was actually filed, because incontestability depends on that filing and does not arrive by the passage of time alone.

How Does Minnesota Cancel a State Trademark Registration?

A Minnesota district court can order a state registration cancelled on grounds the statute lists, including abandonment, non-ownership, improper filing, fraud, genericness, and a conflict with an earlier registration, or on any other ground. The Secretary of State also cancels registrations that are not renewed or that the registrant asks to cancel. After the registrant has had “substantially exclusive and continuous use” for the period in Minn. Stat. § 333.25 subd. 2, those grounds narrow to nonrenewal, the registrant’s request, abandonment, non-ownership, fraud, a confusingly similar mark registered before the registrant’s use, and a “common descriptive name.”

Minn. Stat. § 333.25 subd. 1 directs the Secretary of State to cancel “any registration concerning which the secretary of state shall receive a voluntary request for cancellation from the registrant” and “all registrations filed under sections 333.18 to 333.31 and not renewed according to its provisions.” It also cancels, “in compliance with an order of a district court, any registration concerning which the court shall find that” one of these is true:

• “the registered mark has been abandoned”
• “the registrant is not the owner of the mark”
• “the registration was filed improperly”
• “the registration was obtained fraudulently”
• “the mark is or has become the generic name for the goods or services, or a portion of the goods or services, for which it has been registered”
• the mark is likely to cause confusion with a mark registered earlier in Minnesota or with the USPTO and not abandoned, unless the registrant proves it is the prior user or holds a concurrent federal registration covering Minnesota

The confusion item carries that proviso in these words: “should the registrant prove that the registrant is the prior user of the mark or the owner of a concurrent registration of the mark in the United States Patent and Trademark Office covering an area including this state, the registration shall not be canceled.” The same subdivision adds a catch-all for “a registration when a district court shall order cancellation of the registration on any ground,” which leaves room for grounds outside the list.

Minnesota defines generic in Minn. Stat. § 333.18 subd. 8. Under that definition, “The term ‘generic’ means that the registered mark is no longer considered by the public to identify exclusively the goods or services of the mark holder as described in the application for the mark,” which tracks the federal focus on public understanding.

The registration bars in Minn. Stat. § 333.19 subd. 1 parallel the federal list. They include a mark that “is merely descriptive or deceptively misdescriptive of them” and one that “consists of or comprises immoral, deceptive or scandalous matter,” among others.

Age limits some state grounds too. Minn. Stat. § 333.25 subd. 2 provides that “No registration shall be canceled after the mark has had substantially exclusive and continuous use by the registrant for five years following the registration of the mark except for the reasons set forth in subdivision 1, clauses (1), (2), and (3) and clause (4), items (i), (ii), and (iv),” with further exceptions. Those surviving items include abandonment, non-ownership, and fraud.

The further exceptions include a likely-to-confuse mark that “has been registered in this state before use of registrant’s mark,” or that has “been registered in the United States Patent and Trademark Office with the publication date of it before the date of use of registrant’s mark,” and a mark that is “the common descriptive name of any article, substance, or service” under the subdivision’s last clause. I suggest checking the current text of the statute before relying on that period, because the legislature amends it.

The forum is fixed. Under Minn. Stat. § 333.305, “Actions to require cancellation of a mark registered according to sections 333.18 to 333.31 or in mandamus to compel registration of a mark according to sections 333.18 to 333.31 shall be brought in the district court,” not before the Secretary of State. In a cancellation action, the Secretary of State “shall not be made a party to the proceeding but shall be notified of the filing of the complaint by the clerk of the court in which it is filed and shall be given the right to intervene in the action,” at its option.

Cancelling a state registration does not erase a business’s own common-law rights. Minn. Stat. § 333.30 preserves rights “acquired in good faith at any time at common law, except that the rights as against the registrant of the same or confusingly similar mark are limited to the areas of the person’s use established prior to the registration date and areas in which the person’s mark has become known prior to the registration date,” so geography matters. How federal and Minnesota registration compare is covered on a separate page.

Where Do You Raise a Trademark Invalidity Claim?

A federal registration can be challenged by a petition to cancel at the TTAB, by a counterclaim or defense in a court case involving the mark, or by a USPTO expungement or reexamination petition for nonuse. A Minnesota registration is challenged in Minnesota district court.

A TTAB petition may be filed under § 1064 “by any person who believes that he is or will be damaged” by the registration. The Federal Circuit narrows that class: in Curtin v. United Trademark Holdings, Inc., 137 F.4th 1359 (Fed. Cir. 2025), affirming the dismissal of a consumer’s opposition, it required that a challenger’s “interests are within the zone of interests protected by the statute” and that it have “a reasonable belief in damage that would be proximately caused by registration of the mark,” the test its precedent applies under § 1064. The steps of how a TTAB proceeding runs, from pleadings through discovery and trial, are covered separately.

In court, 15 U.S.C. § 1119 provides that “In any action involving a registered mark the court may determine the right to registration, order the cancelation of registrations, in whole or in part, restore canceled registrations, and otherwise rectify the register with respect to the registrations of any party to the action,” including the plaintiff’s. That lets a business sued for infringement ask the same court to cancel the plaintiff’s registration, and the strategy behind counterclaims in an infringement case is its own subject.

Registrations on the USPTO’s Supplemental Register can be challenged at any time. Under 15 U.S.C. § 1092, a person who believes it is or will be damaged “may at any time, upon payment of the prescribed fee and the filing of a petition stating the ground therefor, apply to the Director to cancel such registration” through the TTAB. For a Minnesota registration, § 333.305 sends the case to district court.

Next Steps for a Minnesota Business Weighing a Trademark Challenge

The first step is to identify what kind of mark is at issue and how old it is, because those two facts decide which grounds remain. I suggest pulling the USPTO or Minnesota Secretary of State record and noting the registration date, the register, and whether an incontestability declaration was filed, because each of those facts changes the list. Genericness, functionality, abandonment, and fraud survive age. A petition to cancel for descriptiveness or confusion with an earlier mark is time-limited, and a Minnesota registration follows the list in § 333.25.

I also suggest gathering the evidence each ground needs before choosing a forum, because that evidence decides the case wherever it is filed. For genericness, that means dated industry and competitor usage. For functionality, it means the owner’s own advertising and any patents, and for abandonment, proof of nonuse.

More on trademark law for Minnesota businesses is on the practice page. If you are weighing a challenge to a registration, or defending your own, email [email protected] with the registration number and a short description of the dispute. I can review the registration record and tell you which of these grounds fit and what evidence each would need, after a conflict check and before you send any confidential documents.