The Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and went into effect on December 27, 2021. The TMA amends the U.S. Trademark Act (Lanham Act) in three (3) key ways. First, it institutes new tools to remove USPTO trademark filings that are based on inaccurate or false claims of use in U.S. commerce. Second, the TMA provides Trademark Examining Attorneys with the discretionary authority to shorten response times to respond to office actions. Third, it restores the rebuttable presumption of irreparable harm in jurisdictions that have dismissed it.
Tools to Remove Inaccurate Claims of Use
One of the biggest reasons for the TMA is the increase in suspicious submissions, which range from inaccurate to fraudulent, many of which originate from foreign applicants and registrants. This new tool is intended to clear and de-clutter the USPTO Trademark Register of trademarks that are not in use and make way for others. Finding an available trademark has frequently been frustrating for trademark owners, and options for canceling or challenging fraudulent and/or non-used trademarks have been limited. Now, with the TMA implementation, trademark owners have a more cost-effective and time-efficient option to challenge third-party marks instead of relying on cancellation or litigation proceedings.
The TMA provides two (2) new options for challenging a registration based on non-use of a trademark: (1) Reexamination; and (2) Expungement. The filing requirements and considerations for each option follow.
What is a Petition for Expungement?
A Petition for Expungement is a document filed with the USPTO where any party may request cancellation of some or all of the goods or services in a registration by claiming that the registrant never used the trademark in commerce with those goods or services.
- How to Initiate: the complaining party must supply evidence of reasonable investigation showing that the registered mark was never used for the goods/services identified in the petition.
- Timing: a petition for expungement can be filed between the THIRD and TENTH anniversaries of the registration.
- Result: a successful challenge will result in the removal of any goods/services not in use under the trademark.
- Foreign Registrants: Section 44 and 66 registrants (usually foreign trademark owners that rely on home-country registrations to secure U.S. trademarks instead of relying on use) can establish excusable non-use for the first five (5) years of registration.
What is a Petition for Reexamination?
A Petition for Reexamination is a document filed with the USPTO where any party may request cancellation of some or all of the goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before the application or statement of use filing date.
- How to Initiate: the complaining party must supply evidence of reasonable investigation showing that the registered mark was not in use for the goods/services identified in the petition at the time the use-based application was filed or at the time the amendment to allege use was filed.
- Timing: a petition for reexamination must be filed before the FIFTH anniversary of the registration.
- Result: a successful challenge will result in the removal of any goods/services not in use under the trademark.
- USPTO can institute a re-examination on its own.
Establishing Reasonable Investigation
A petition must include a verified statement that a reasonable investigation was conducted to determine the trademark has not been used. The statement must describe the sources searched, how and when the searches were conducted, and what information and evidence, if any, the searches produced.
The investigation should establish that a search for use in relevant channels of trade or advertising for the identified goods/services did not reveal use. A search of a single Internet search engine will not likely be considered sufficient.
Responding to an Expungement or Re-Examination Proceeding
If the petition establishes a sufficient claim of nonuse, the USPTO will initiate either an Expungement or Reexamination proceeding. Once a proceeding is initiated, such determination is final and non-reviewable and ends the petitioner’s involvement.
Next, the USPTO Trademark Examining Attorney will issue an office action that notifies the registrant about the proceeding. In response, the registrant must provide evidence of use for the goods or services in question for the relevant time period. A registrant will have three (3) months to respond by either (i) providing appropriate evidence; or (ii) deleting some or all of the goods or services at issue from the registration.
A registrant can provide the following evidence to the USPTO in response to the Petition:
- Images showing use of the mark on goods/services at issue,
- Images showing use of the mark on containers or packaging for the goods at issue,
- Images showing use of the mark on labels or tags affixed to the goods at issue,
- Images showing use of the mark on a display associated with the good at issue (in-store display) in a point-of-sale nature,
- Advertisements showing use of the mark in connection with the services at issue.
Such evidence must be accompanied by a verified statement setting forth in numbered paragraphs factual information about the images provided. If no response is filed by the due date, the proceeding will be terminated and the registration will be canceled in whole or part, as appropriate. If a response is filed by the due date, the USPTO Trademark Examining Attorney will consider all the evidence and decide whether the registration should be canceled as to some or all of the challenged goods or services.
If a registrant is unhappy with the outcome and would like to appeal or request a reconsideration of the decision, they will have three (3) months to do so. If no request or appeal is filed, the USPTO will issue a notice of termination of the proceeding that specifies the final determination regarding the goods or services at issue, and the registration will be canceled in whole or in part.
Additional Information
- Filing fees of $400 per class; professional fees separately charged
Discretionary Shortened Office Action Deadlines
Under the USPTO’s current rules, applicants must respond to USPTO Office Actions within six (6) months from the issuance date to avoid the abandonment of an application. Due to rising concerns relating to applications and registrations on the USPTO Trademark Register not in use in U.S. commerce, the TMA now gives Trademark Examining Attorneys the ability to set a shorter response period depending on the issues involved in the Office Action.
Restoration of Presumption of Irreparable Harm
A trademark owner seeking a court order to stop an infringer from using its trademark must first prove that the trademark owner will be “irreparably harmed” if the infringer is not stopped. Before the TMA, courts were split on the standard for injunctive relief in trademark infringement cases. The TMA now clarifies that a nationwide uniform standard of presumption of irreparable harm should be applied in trademark cases. This presumption simplifies the process for obtaining injunctive relief.
Practical Pointers
- Hire a lawyer to assist you with filing or responding to Petitions for Expungement or Reconsideration.
- Keep updated contact information with your counsel and the USPTO. If you have a change in address or e-mail, notify all relevant parties so that any petitions are directed to you expeditiously.
- Trademark owners should consider an audit of their own trademarks and registrations and consider taking proactive steps at the time of registration maintenance or renewal to delete goods and/or services from registrations that are no longer in use to avoid a non-use challenge.
- Pay close attention to each response deadline upon receipt of an Office Action, as we may start seeing much shorter response periods than the accustomed 6-month period.
If you have been issued a Petition for Expungement or Reexamination, we at MAVEN® IP are trained and qualified U.S. trademark attorneys and we would love to help you with filing a response. We are transparent about our fees, and our goal is to file responses that will persuade the USPTO to let the registration stand.
We would be happy to schedule a free 15-minute consultation to discuss your legal needs. Please use the contact form on our website, or the consultation links in our attorney’s profiles, if you need further assistance.