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The enactment of the Trademark Modernization Act and rollout of
new expungement and re-examination procedures, as well as adding
non-use as a new ground for cancellation in TTAB proceedings, have
brought more options for combating trademark registration for
non-use. There are advantages to each type of proceeding, and as we
now approach six months post-launch, we have some more guidance
from the USPTO on best practices.
Pursuing a cancellation at the TTAB is still the most familiar
process for many practitioners. The new ground for cancellation
based on non-use, as opposed to abandonment, means petitioners can
bring a cancellation action at any time three years
post-registration. They also do not have to show an
intent-not-to-resume use, only that the trademark was never used.
As in all TTAB proceedings, the parties benefit from the Federal
Rules of Civil Procedure and the Federal Rules of Evidence, as they
both participate in discovery, which is not an option in the new
ex parte proceedings.
In cases where the registrants opt not to respond to a
cancellation action, petitioners often receive default judgments as
quickly as three months from filing the cancellation. However, if
the alleged non-use is disputed, these cases can follow a similar
track to other TTAB cases in terms of the timeframe to resolution
and require a significant amount of engagement by both parties.
For parties considering an expungement or re-examination
proceeding, the USPTO is reviewing petitions as early as six weeks
from filing in some cases, although the process has taken longer in
others. If the office initiates the proceeding, the registrant has
up to four months to respond; the office will then review the
evidence submitted in that response.
It is too early to be certain how long the average
re-examination or expungement proceeding will take from start to
finish, but it is likely that proceedings will last at least six
months, especially if the registrant takes advantage of the full
response period, and possibly longer. However, for petitioners,
once a re-examination or expungement is instituted, the petitioner
no longer has a role in the process. Not having to engage in
discovery or other aspects of a case before the TTAB could be
beneficial for some petitioners.
As the USPTO and practitioners engage in this new process, there
will be a learning curve, and the USPTO has issued a set of
“best practices” and has been educating practitioners on
some common mistakes. To date, just over 100 expungement or
re-examination petitions have been filed with the USPTO, all of
which are available for review (links below). Based on the filings
received, the USPTO indicated that many common mistakes include
providing screen captures and URLs that are too small to read or
offering no index of evidence to explain the relevance of each
piece of evidence. The USPTO is also looking for evidence of both
current and past non-use, which can sometimes be obtained from
websites such as archive.org (WayBack machine). If other
registrations are cited, the actual documents must be provided and
not just referenced through Trademark Status Document Retrieval
summaries. And evidence should be provided for each item challenged
within a class. Finally, a prima facie case of non-use for
the goods or services for which the specimen was offered may be
established if there is evidence that the original specimen is fake
or digitally altered.
See links below for USPTO resources, including best practices
and petitions filed with USPTO:
This article originally appeared in World Trademark Review
Weekly on July 7, 2022, and is reprinted with permission.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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