The United States Patent and Trademark Office (USPTO) recently published a final rule implementing the Trademark Modernization Act of 2020 (TMA). The TMA amends the federal trademark statute (Lanham Act) in several ways, but the most significant aspect for the business community is the establishment of new ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce has not been made.
These proceedings are designed to protect the integrity of the federal register by removing fraudulent registrations that went undetected in the examination process. The reexamination proceeding determines whether a mark subject to a use-based registration was in use in commerce on or in connection with some or all of the goods/services as of the date that the registrant alleged use. The expungement proceeding determines whether the registered mark has ever been used in commerce with some or all of the goods/services.
The final rule provides that the time for filing a petition for expungement is any time following the expiration of three years from date of registration and before the expiration of 10 years following the date of registration. However, until December 27, 2023, any registration that is at least three years old may be challenged via the expungement procedure. Thus, expungement filings over the next two years will likely be especially high when the vast majority of over 2 million registrations are challengeable. With respect to reexamination, the petition must be filed within the first five years after the date of registration.
A proper petition requesting institution of expungement or reexamination requires: (i) filing fee of $400/class; (ii) verified statement detailing the elements of the reasonable investigation of nonuse conducted by the petitioner, i.e., a description of how and when the searches were conducted and what the searches disclosed; and (iii) documentary evidence supporting a prima facie case of nonuse. Any person may file and the final rule does not require a petitioner to identify the name of the real party of interest. However, the USPTO Director has the authority to require that information in certain cases.
A “reasonable investigation” will vary on the circumstances, but any reasonable investigation requires a comprehensive search from reasonably accessible sources focused on use of the mark during the relevant time period on or in connection with the goods/services. The sources may include but are not limited to: (i) state and federal trademark records; (ii) websites and other media believed to be owned and controlled by registrant; (iii) websites and other media where the relevant goods and services would likely be advertised or offered for sale; (iv) print sources likely to contain reviews of the relevant goods/services; (v) records of filing with state/federal agencies; (vi) registrant’s marketplace activities, i.e., any attempts to purchase goods/services from the registrant; and (vii) litigation records. Generally, the petitioner should strive to conduct an investigation that produces reliable and credible evidence of nonuse that likely requires more than a single internet search, but does not require an exhaustive showing that all potentially available sources were searched.
The Director determines whether the petitioner has made a prima facie case of nonuse for each good/service in a final and non-reviewable decision. If a proceeding is initiated (the petitioner’s involvement ends), an Office Action is issued to the registrant with a two-month response period (failure to respond results in immediate cancellation). If the registrant rebuts the prima facie case of nonuse, the proceeding terminates with an estoppel effect on further proceedings. Otherwise, a final Office Action is issued with another two-month response period, wherein the registrant may either request reconsideration or appeal to the Trademark Trial and Appeal Board.
The USPTO will begin accepting petitions for expungement and reexamination on December 18, 2021. Thus, brand owners and attorneys will soon see how these new proceedings operate in practice and whether these proceedings will “declutter” the federal register in order to clear the way for legitimate businesses to register their own marks.
Stites & Harbison, PLLC’s full-service Intellectual Property & Technology Group regularly assists clients in the acquisition, management, licensing, and litigation of patents, copyrights, trademarks, and trade secrets. For questions, comments, or assistance with any intellectual property-related matters, please contact the author or any of the other attorneys in our group.