Use-based Trademark Challenges at USPTO Become Effective December 18, 2021
The Trademark Modernization Act authorizes the United States Patent and Trademark Office (USPTO) to amend its trademark rules of practice to provide several useful ways to challenge applications and registrations that do not demonstrate actual use in commerce: (1) ex parte expungement and reexamination proceedings as a means for removing registrations based on inaccurate claims of use in commerce; (2) a new ground for alleging nonuse before the Trademark Trial and Appeal Board; and (3) codification of the letter of protest procedure. Letters of Protest may also assert likelihood of confusion arguments. These new measures will go into effect on December 18, 2021.
Ex Parte Expungement and Reexamination Proceedings
An ex parte expungement proceeding may be used to challenge a registration on the ground that the mark has never been used in commerce in connection with some or all of the registered goods and/or services. A petitioner may request, and the Director of the USPTO may institute on their own initiative, an expungement proceeding between three and ten years after the date of registration, with one significant exception: Until December 27, 2023, an expungement proceeding may be instituted with respect to any registration three years old or older in an attempt to clear “dead wood” from the register.
An ex parte reexamination proceeding, on the other hand, is available with respect to registrations under Section 1 of the Trademark Act in which the mark was not in use in commerce in connection with some or all of the registered goods and/or services as of the relevant date. For registrations based on Section 1(a), the “relevant date” is the filing date of the application; for registrations based on Section 1(b), the “relevant date” is the later of the filing date of the amendment to allege use or the expiration of the deadline for filing a statement of use (including all approved extensions). A petitioner may request, and the Director of the USPTO may institute on his/her own initiative, a reexamination proceeding during the first five years following the registration date.
Petitions for expungement and reexamination proceedings will cost $400 in USPTO fees per challenged class. A petitioner is not required to identify the name of the real party in interest on whose behalf the petition is filed (although the Director retains the discretion to require that information to prevent abusive filings). Petitions must include an explanation of petitioner’s reasonable investigation into the registrant’s use of the registered mark in connection with the challenged goods and services and all supporting evidence supporting a prima facie case of nonuse. Once an expungement or reexamination proceeding is instituted, registrants will have three months (with a 30-day extension available for a fee of $125) to provide evidence of use, information, exhibits, affidavits, or declarations—something more than the specimens of use already of record for the registration—to rebut the prima facie case. If the registrant’s response fails to establish the required use, the registration will be cancelled, in part as to some goods and/or services or in full, depending on the circumstances. A decision on expungement or reexamination may be challenged via a request for reconsideration or an appeal to the Trademark Trial and Appeal Board.
In view of the above, brand owners should review their portfolios to confirm the accuracy of their registrations.
Because a notice of an expungement or reexamination proceeding will be sent to a registrant’s correspondence address of record and attorney of record, registrants should ensure their contact information and representation details are updated to receive Office Actions instituting such proceedings.
Registrants should review their portfolios to determine whether their identifications of goods and/or services accurately reflect the actual use of their marks in commerce. For example, registrations with expansive identifications of goods and/or services should be scrutinized to ensure that the mark has been used in connection with each of the goods and/or services. Additionally, registrations initially based on Section 1(b) should be reviewed to ensure that the mark has been used in connection with each of the goods and/or services by the filing date of the amendment to allege use or before the deadline for filing a statement of use, as applicable.
A proactive review of a registrant’s portfolio could result in cost savings: Deletions of goods and/or services made in response to an expungement or reexamination proceeding, or during a maintenance period (for Declarations of Use and renewals), will cost $250 per class, whereas deletions made outside these periods do not incur a USPTO fee.
Because a response to an expungement or reexamination proceeding should include more than specimens already of record, registrants should consider capturing and maintaining additional evidence of use—including the URL and access date for internet materials—for all relevant time periods as a defensive mechanism when filing applications.
New Nonuse Ground for Cancellation at the Trademark Trial and Appeal Board (TTAB)
A party will also be able to file a petition to cancel a registration any time after the first three years from the registration date on the basis that the mark has never been used in commerce. Petitions to cancel filed with the TTAB will incur a fee of $600 per class. In cases resolved by default judgment, a petition to cancel on the ground of nonuse with the TTAB may bring relief faster than pursuing expungement or reexamination.
Letters of Protest
Letters of protest provide a means for third parties to submit evidence bearing on the registrability of a mark during prosecution. At a cost of $50 in USPTO fees, letters of protest may be used to challenge applications for confusingly similar marks and/or call the USPTO’s attention to fake specimens or fraudulent information. The Trademark Modernization Act clarifies that a determination by the USPTO to include a letter of protest in the record of an application shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding. It also attempts to expedite the letter of protest procedure by requiring the Director to make a determination on a letter of protest within two months from the date it is filed with the USPTO. The USPTO has indicated that letters of protest may be particularly helpful to Examining Attorneys to the extent they include evidence regarding falsified specimens and are filed before a first Office Action issues.
Trademark Modernization Act of 2020 (Public Law 116-260, Div. Q, Tit. II, Subtit. B, §§ 221-228 (Dec. 27, 2020)).