Advice for applicants/registrants
In the next phase of the implementation of the Trademark Modernization Act 2020, the United States Patent and Trademark Office (USPTO) will open two new ex parte cancellation proceedings on 27 December 2021. These proceedings were created as part of the USPTO's broader goal of eliminating overbroad and questionable registrations from the registry. However, the implications of these proceedings will be felt by all applicants/registrants.
Dubbed "expungement" and "re-examination", in each case, third parties may request cancellation of some or all of the goods/services of a registration:
- Expungement considers whether the registration was ever in use and may be filed between the third and 10th years after registration (although they may be filed against any registration until 27 December 2023). Expungement is available against all marks.
- Re-examination considers whether the mark was in use as of the date an application was filed (if filed based on use) or, if the application was intent-to-use, the later of the date an amendment to allege use was filed or the date that the deadline to file a statement of use expired. It may occur anytime in the first five years of registration. Re-examination is available against only use or intent-to-use based marks; it is not available if a mark was issued based on foreign registration (either nationally filed or through the Madrid Protocol).
The proceedings can be initiated by third parties with the submission of a petition supported by evidence of non-use, as well as a filing fee. The director may also initiate proceedings on its own. If there is a prima facie case for cancellation, the director will issue an office action to which the registrant may respond with evidence of use or deletions to the challenged goods/services. If the registrant does not submit a satisfactory response, a final office action may be issued, which the registrant may ultimately appeal to the Trademark Trial and Appeal Board.
Advice for applicants/registrants
While the new proceedings may act as effective offensive tools for parties looking to overcome obstacles or clear the registry, they require defensive measures from all parties in order to avoid cancellation and the time/expense that accompanies these efforts:
- All applicants/registrants should:
- ensure that correspondence information with the USPTO is up to date in order to receive any notifications that may issue. Foreign applicants/registrants should make sure they have a domestic representative on file to receive correspondence from the USPTO; and
- maintain detailed evidence of use (including dates) so this information is easily accessible if a cancellation arises.
- Non-use-based applicants should:
- consider eliminating superfluous goods and services from the identifications of goods and services – items that are clearly unrelated to the applicant's goods/services may make the mark a target for cancellation; and
- prolong the application's pendency if the mark will not be used in a timely manner on all of the goods/services.
- Use-based applicants and registrants completing maintenance filings should consider submitting extensive evidence showing the use of the mark on more than one item per class, as this may deter third-party attacks or prevent the USPTO from instituting one. This may also help avoid random audits, which have become increasingly common.
For further information on this topic please contact Rebecca Liebowitz or Catherine S Mitros at Venable LLP by telephone (+1 410 244 7400) or email ([email protected] or [email protected]). The Venable LLP website can be accessed at www.venable.com.