The United States Patent and Trademark Office (PTO) is currently seeking comments on a potential new procedure for trademark cancellation actions through the Trademark Trial and Appeal Board (TTAB). The proposed changes are designed to enable a third party to challenge more efficiently a registration based on abandonment or nonuse. The TTAB estimates that such a streamlined procedure would shorten cancellation proceedings for nonuse to 70 days in the case of a default judgment and to 170 days in the case where a respondent elects to respond.
The proposed changes include creating specific procedures and timing to facilitate speed and efficiency. For example, under the streamlined process, pleading, presentation of evidence, and limited briefing would occur simultaneously. Further, counterclaims would not be permitted, and a respondent would have 40 days to answer a cancellation action; the answer would be required to include proof of use or other evidence on which the respondent seeks to rely to counter the abandonment or nonuse grounds. In turn, the petitioner would have 40 days upon receiving the answer to either (1) reply; (2) withdraw the petition; or (3) file a notice of conversion to a full cancellation proceeding. The fee for the streamlined proceeding would also cost less than a petition in a full proceeding (although the PTO hasn’t finalized what that lower fee would be yet).
All comments should be submitted no later than August 14, 2017. Click here to be directed to the page whereby you can submit a comment.