June 08, 2017

Cheaper, Faster, … Better?

In its quest to improve the accuracy of the trademark register, the U.S. Patent and Trademark Office (the "PTO") has proposed a streamlined cancellation process for review and comment by August 14, 2017. The proposal would modify existing regulations to make the streamlined process an option available to petitioners seeking to cancel a federal trademark registration on certain grounds.

Under the proposed system, someone could petition to cancel a trademark registration based on either abandonment and/or lack of use of the registered mark by the date use in commerce was alleged. The features of the proposed system include:

Limited grounds (abandonment, lack of use as of date use was alleged);

Petition must include facts establishing petitioner's standing;

Petitioner must plead facts supporting basis for cancellation with particularity;

Evidence supporting the claims must be submitted with the petition;

Lower fee;

Proof of use or other evidence must be included with answer;

No more than one extension per party for answer or reply;

Limited discovery on standing permitted only for good cause;

No counterclaims;

No oral hearing;

Decision within expedited timeframe;

Once a petition is filed, respondents would be required to answer within 40 days and could request limited discovery on the issue of standing (which would only be granted for good cause). Thereafter, the petitioner could reply with rebuttal evidence, withdraw the petition (without prejudice to filing a cancellation proceeding on other grounds), or file a notice of conversion to a full cancellation proceeding. Both parties would have the right to judicial review.

The PTO anticipates that proceedings would range in timeframe from 70 days (in the case of a default judgment) to approximately 170 days for most cases.

The proposed system strives to clear 'dead wood' from the trademark register. This objective is similar to the goal of the audit program that went into effect in February of this year (we blogged about this program when it was proposed for comment last year).

The proposed system also illustrates another attempt to streamline proceedings before the Trademark Trial and Appeal Board (the "TTAB"). This objective is consistent with the motivation behind some of the most recent amendments to the TTAB rules (which limited discovery and imposed stricter deadlines for motions) as well as the TTAB's accelerated case resolution process (which allows parties in cases before the TTAB to agree to abbreviated trials on the merits or to agree to other efficiencies that might streamline the process and expedite resolution of the case).

What are your thoughts? The PTO invites comments on the proposed system on or before August 14, 2017.