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13 December 20215 minute read

Two gifts, and a small lump of coal, from the USPTO to trademark owners

Just in time for the holidays, the USPTO has gifted trademark owners with two new presents (and one lump of coal) to protect trademarks, in releasing final regulations for the Trademark Modernization Act of 2020 (the TMA). These regulations are the most substantial change to federal trademark law – the Lanham Act – in at least a half decade.

The TMA adds two new actions – ex parte expungement and examination – and cuts in half the time to respond to Office actions.

The presents: two new procedures

The new "expungement" procedure allows a party to request removal of some or all of the goods and services from a registration because the registrant never used the mark in commerce in connection with such goods. The second tool to challenge registrations is "reexamination," a proceeding which enables a party to petition for reexamination on the grounds the mark was never used in commerce at all prior to registration.

Both procedures are ex parte and are instituted by filing a petition to the Director of Trademarks, setting forth a prima facie case that the mark was never used in commerce for all or some of the goods/services in the registration. Notably, that is a different standard than mere cancellation based on non-use.

Reasonable investigation

The TMA requires a petition to be filed only after a "reasonable investigation." This is defined as “an appropriately comprehensive search likely to reveal use of the mark in commerce on or in connection with the relevant goods and/or services.” 86 FR 64300. What is “appropriate” will be considered on a case-by-case basis, and the final rule sets forth good guidance for petitioners in this regard.

The filer must explain the steps taken in its investigation. Specifically, the petitioner must provide the source of its information, a description of how it conducted its search, the sources searched/consulted, when the research was conducted, and what the research identified. The sources of information should include “reasonably accessible sources that can be publicly disclosed.”

The research should also cover current use and past activities; therefore, the research may include “archival evidence.” Presumably, the Wayback Machine and other backward-looking sources of evidence will be helpful in this regard.

Using a single search engine is generally not considered a reasonable search. Sources that should be considered include (1) state and federal trademark records; (2) “websites and other media” controlled by the registrant; (3) websites and other media where the products/services may be sold; (4) relevant print sources; and (5) applicable filings with any state or federal agency, such as filings with regard to marketplace activities and litigation records. Use of a private investigation is explicitly not required.

The procedures

Only a “complete” petition will be considered by the USPTO. If a petition is not “complete,” the petitioner will be granted 30 days to amend. After the complete petition is filed, the director will decide whether to institute a proceeding.

Once the petition is filed, it is uploaded to the USPTO’s public records for the mark at issue. The proceeding is instituted in an Office Action which is sent to the registrant or its attorney of record.

At that point, the petitioner is done, and all relevant notices are only provided to the registrant. The registrant is then given three months (with an option for a three-month extension for $125) to provide evidence (such as documents, information, and declarations) to rebut the petition’s allegations. If no response is received, the registration will be cancelled in full or in part (depending on the nature of the action). The burden of proving non-use is ultimately on the USPTO.

While the registrant must establish use in commerce in the US to retain its registration, it need not meet the stringent rules required for proper specimens. The registrant need only provide evidence of “use in commerce” of its mark in the US. Mere testimonial evidence is not sufficient, and it should be corroborated by documentary evidence.

Once the response to the Office action is submitted, the USPTO will make a determination on the merits. If the USPTO finds that the submitted evidence does not constitute use, it will issue a final action. The registrant is then provided three months to file a request for reconsideration or appeal the decision to the TTAB. The USPTO’s official costs for the action are $400 per class, reduced from the original recommendation of $600, suggesting that the USPTO may view this as a necessary tool for cleaning the register of marks not in use. Indeed, the final rule states that these proceedings are intended to provide “a less expensive alternative” to a cancellation action.  The new procedures go into effect December 18, 2021.

New Office action deadlines – the lump of coal

The USPTO now requires responses to Office actions to be filed within three months instead of six, although applicants can apply for one three-month extension by paying a $125 fee.

The deadline for applications file under the Madrid Protocol (or Section 66 of the Lanham Act) will remain at six months. Given technical issues in implementing this rule, it will not go into place until December 1, 2022. 

Find out more about these developments by contacting Michael A. Geller, Keith Medansky or your usual DLA Piper attorney.