By: Hyung Gyu (Leo) Sun

The Trademark Modernization Act (the “TMA”) was enacted on December 27, 2020, amending the Trademark Act of 1946 (the “Lanham Act”), among other things, to establish new ex parte (single party) expungement and reexamination proceedings to cancel marks registered with the United States Patent and Trademark Office (the “USPTO”) for which the required use in U.S. Commerce was not made or not timely demonstrated to the USPTO.

On November 17, 2021, the USPTO published its new rules to implement the provisions of the TMA, including the ones establishing the aforesaid proceedings. These changes are significant because they provide additional legal avenues for attacking the validity of existing registered marks and canceling or “expunging” the USPTO registered marks of others (or portions thereof). These new proceedings are meant to provide a more efficient and less financially burdensome alternative to an inter partes (two-party) cancellation proceedings before the Trademark Trial and Appeal Board (the “TTAB”), which are essentially litigation proceedings. The outcome of these proceedings, if successful, are essentially identical – the registered mark loses its registration status entirely or for some of the goods/services that the registration covered, depending upon the evidence presented.

The legal standard, and therefore the evidentiary requirements for each type of proceeding differ. A Reexamination proceeding “reexamines” the evidence of use originally submitted in the application for registration and whether that evidence properly demonstrated use of the mark prior to the requisite deadline for submitting use in that application. The reexamination proceeding does not reexamine the application for any other issues that were initially examined in the application for registration. An expungement proceeding reviews the past and present evidence of use of the mark and determines if the mark has ever been used in U.S. Commerce.  

These may seem like simple principles that should no longer be an issue in a registration, but there are a lot of details concerning how the use of the mark was demonstrated and the timing of that use, which could have been contrary to U.S. trademark law. For instance, U.S. trademark law dictates that the relevant date for an initially use-based application is the application’s filing date. The relevant date for an initially intent-to-use application is the filing date of an amendment to allege use or the deadline to file a statement of use, depending upon which use allegation format was submitted.

In reexamination proceedings, the registrant must provide evidence that the use of the mark in U.S. Commerce on or in connection with the goods/services at issue occurred on or before the aforesaid relevant date. The deadline for demonstrating the mark’s use could have been missed due to various reasons, including but not limited to defective or premature specimens, use of the mark in advertising services that were not yet rendered, or selling products that were not yet delivered. In expungement proceedings, the registrant must provide evidence that the use of its mark occurred prior to the filing date of the petition to expunge or before the date the proceedings were instituted by the USPTO.

These procedures derive from U.S. trademark law which has always deemed non-use of a mark for three or more consecutive years as prima facie evidence of abandonment of the mark. However, prior to this rule change, this claim of abandonment could only be raised as a ground for cancellation of the registered mark in a traditional two-party adversarial proceeding. The same is true with respect to the single-party expungement proceeding that now no longer needs to be part of a two-party cancellation action.  

Timing 

The TMA sets forth the time periods during which a petitioner can request institution of expungement and reexamination proceedings and during which the Director of the USPTO may institute such proceedings based either on a petition or on his/her own initiative.

The time period for a petitioner to request and the Director to institute an ex parte expungement proceeding is between three and ten years following the date of registration since any 3-year period of non-use of a mark (after evidence of use was required) presumes the mark was not in use. However, the 10-year old registration limitation does not apply to the request institution of an expungement proceeding until December 27, 2023, which is three years from the enactment of the TMA. This allows for the expungement of very old registrations that were never previously subject to these new rules. The time period for a petitioner to request and for the Director to institute a reexamination proceeding is during the first five years following the date of registration. This is consistent with the five-year statute of limitations for challenging a trademark registration that has been built into the Lanham Act, i.e., if the registration could not be properly challenged in its first five years, it is entitled to a peaceful title.

Requirements for Petition

The most important procedural requirement in these new proceedings, other than the requirement to support the basis for the proceeding, is a verified statement signed by a person with first-hand knowledge of the facts to be proved, setting forth the elements of the reasonable investigation of non-use that was conducted. What constitutes sufficient evidence that would support a case varies depending on the goods and/or services involved and their normal trade channels. Also, as for the requisite reasonable investigation, while the petitioner does not need to show that all of the potentially available sources of evidence were searched, a single internet search engine search would likely not be deemed a reasonably sufficient investigation. This requirement is the USPTO’s safeguard to ensure that petitioners are not abusing the system and unnecessarily harassing registrants.

In short, and as it is the case with most other trademark dispute proceedings, these proceedings raise highly fact-specific inquiries. As such, they require close attention to factual details and identifying relevant laws applicable to the specific facts. The answer to the inquiries may often determine the validity/invalidity of a registered trademark. It is also interesting to note that the USPTO did not establish a requirement for who can file these petitions, i.e., whether the petitioner has a legitimate interest in the outcome of registration because the underlying policy of these proceedings is to eliminate registrations for marks that are not being properly used as a mark.

As such, Dunlap Bennett & Ludwig or any counsel for a party could be a petitioner based upon their prurient interest to have a more robust trademark register of only marks actively in use.

To better understand how these new proceedings may impact your company’s brand protection and trademark portfolio management strategies defensively or offensively, please contact Dunlap Bennett & Ludwig at 703-777-7319 to schedule a consultation.

To learn more about Dunlap Bennett & Ludwig and how we can help preserve your IP assets, contact us by calling 800-747-9354 or emailing clientservices@dbllawyers.com.


Tagged with: , , , ,

Posted in: Intellectual Property - Trademarks

  • Contact Us

    Contact Form

  • (800) 747-9354