When Can District Courts Cancel Trademark Applications?

Overview
Courts are divided on whether their power to order the cancellation of trademark registrations extends to still pending trademark applications under review by the United States Patent and Trademark Office (USPTO). The Ninth Circuit's decision in BBK Tobacco expands the courts' authority, ruling that district courts may cancel or change trademark applications, even if the applications are not directly related to a registered mark. This decision adds to an ongoing debate between a first group of courts that limits power to only registered marks and a second group that claims broader authority when a challenged application is sufficiently like an existing registered trademark involved in the same suit. Although some courts have addressed the issue since BBK Tobacco, none have fully adopted the broader powers outlined by the Ninth Circuit.