by John W. McGlynn
As part of the Trademark Modernization Act of 2020, two new United States Patent & Trademark Office (USPTO) ex parte proceedings to cancel registered marks become available on December 18, 2021: expungement and reexamination. The new proceedings, which consider non-use of registered marks, are intended to provide faster, less expensive alternatives to inter partes proceedings before the USPTO Trademark Trial & Appeal Board (TTAB).
Expungement proceedings challenge a registration on the basis that the Registrant never used the mark in connection with some or all of the registered goods and services. Any registration may be the subject of an expungement proceeding initiated between three and ten years after the registration issues, with the exception that until December 27, 2023, any registration that is at least three years old is eligible for an expungement proceeding.
Reexamination proceedings challenge a use-based registration on the basis that the mark was not in use with some or all of the goods and services at the time use was alleged during the registration process. For applications initially filed based on actual use, the relevant date is the filing date of the application. For applications initially filed based on intent-to-use, the relevant date is the later of the date when an amendment to allege use was filed or the deadline to file a statement of use. Reexamination proceedings must be initiated within 5 years of registration and can only be brought against registrations in which use has been asserted as part of the registration process. Registrations based on foreign registration are not eligible for reexamination.
Expungement and reexamination proceedings can be initiated by third parties or the USPTO Director. A third party starts the process of initiating an expungement or reexamination proceeding by filing a petition that includes 1) a verified statement indicating a reasonable investigation was conducted into use of the mark and providing a concise factual statement explaining the petition basis, 2) evidence supporting a prima facie case of nonuse, and 3) a $400 per class petition fee. The third party’s involvement ends at that point. If the USPTO institutes an expungement or examination proceeding, the Registrant has 3 months to respond by providing evidence of use, excusable nonuse, or deleting the relevant goods and services from the registration. The Registrant can obtain a one month extension of time to respond for a $125 fee. In the event that the USPTO determines that the registration should be cancelled for the relevant goods and services, the Registrant has 3 months to file a request for reconsideration or appeal to the TTAB.
These new expungement and examination proceedings underscore the importance of preserving evidence of commercial use of a mark and, for applications based on foreign registrations, tailoring the identification to important goods and services with which the mark is likely to be used.
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