On December 18, 2021, the regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect. These regulations provide new tools for individuals and businesses to remove unused registered trademarks from the federal trademark register. The rules also streamline the existing U.S. Patent and Trademark Office (USPTO) registration process.
What’s new under the Trademark Modernization Act
Under the TMA, individuals and businesses now have a separate and more efficient avenue to contest some or all of the goods and services in a registered trademark through ex parte expungement or reexamination proceedings.
Parties may now request cancellation of some or all of the goods and/or services in a registration because the registrant never used the trademark in commerce with those goods and/or services.
Expungement proceedings must be requested between 3 and 10 years after the registration date of the unused trademark. Until December 27, 2023, any trademark that has been registered for at least 3 years can be subject to an expungement proceeding, regardless of the 10-year limit.
Parties may request cancellation of some or all of the goods or services in a use-in-commerce registration (under Section 1(a)) on the basis that the trademark was no in use in commerce with those goods and/or services on or before the date of first use in commerce specified in the trademark application (for applications filed on the basis of use in commerce) or the date of the amendment to allege use or the date of the deadline to file a statement alleging use (for applications filed on the basis of an intent to use in commerce).
Reexamination proceedings must be requested within the first 5 years after registration. Any goods or services cancelled in a reexamination proceeding will no longer be covered by the trademark registration.
Requirements for expungement and reexamination petitions
Any business or individual who seeks reexamination or expungement will be required to file a petition with the USPTO that includes:
- A verified statement that establishes a reasonable investigation was conducted regarding whether the trademark had been used in commerce with specified goods or services and includes a concise factual statement explaining the basis for the petition
- Evidence supporting a prima facie case of nonuse in commerce (“a reasonable predicate”)
- A $400 fee per class of goods or service to be reexamined or expunged
If the petition establishes a prima facie case that the trademark was never used in commerce for the specified goods and/or services (expungement) or was not in use in commerce as of the relevant date for the specified goods or services (reexamination), then the USPTO Director will institute a proceeding and notify the trademark registrant by issuing an Office Action, to which the registrant must respond. The USPTO will then determine whether to cancel some or all of the goods or services, with the right by the registrant to appeal such determination.
In making the determination to institute a reexamination or expungement proceeding, the USPTO Director is required to consider both the petitioner’s evidence as well as the electronic record of the registration at issue.
Other changes to the trademark registration process
The TMA has also changed some of the preexisting rules and procedures for trademark registration, which are outlined below.
Expungement added to Trademark Trial and Appeal Board (TTAB) proceedings
Parties may now request the cancellation of a registered trademark through the TTAB on the new ground of expungement (meaning that the mark was never used in commerce). This ground for cancellation will be available at any time after the first 3 years from the registration date. Other grounds for cancellation such as nonuse and abandonment of the trademark will not be affected under this rule change.
Don’t delay responding to USPTO Office Actions
With the implementation of the TMA, starting on December 1, 2022, most applicants and registrants (for post-registration filings) will be required to respond to USPTO Office Actions within 3 months instead of 6. A party can request a 3-month extension so long as they pay a $125 fee. Any failure to timely respond to an Office Action will result in abandonment or cancellation (for post-registration Office Actions).
Consult with an experienced trademark attorney before you act
Before you file a petition to have the USPTO reexamine or expunge a registered trademark, you should consult with an experienced trademark attorney. Slater Legal PLLC is experienced in trademark registration matters and disputes, including cancellation and opposition proceedings. Learn more here.