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Expungment and Rexamination of Trademarks

By John DiGiacomo

In December of 2021, the United States Patent and Trademark Office (USPTO) issued some long-awaited updates to their processes and procedures that make it easier to challenge abandoned trademarks and make it faster to get marks registered.

Cancelling unused trademarks

The USPTO has created two brand new types of administrative proceedings to challenge trademarks that are no longer—or never were—used to identify goods and services. These new proceedings allow any party to challenge any good or service in a registration if the challenger can provide evidence that the trademark is not being used by the trademark holder. If they can prove this, then the trademark owner has 3 months to prove they are and were using their trademark as stated in the registration. Both new proceeding types make cancelling unused trademarks faster, more efficient, and cheaper.

First, the UPSTO created an expungement proceeding. Any party—i.e., not just holders of similar trademarks—may request cancellation of some or all the goods or services in a trademark registration if the trademark holder never used the trademark in commerce with those goods or services. Expungement proceedings must be brought between three and ten years after the trademark was registered.

Second, the UPSTO created a reexamination proceeding. Any party may request cancellation of some or all the goods or services in a trademark registration if the trademark holder did not begin using the trademark in commerce with those goods or services on the date that the trademark holder claimed to have begun using it. This new proceeding is especially useful to remove trademark squatters from the federal register. Reexamination proceedings must be brought within five years after registration.

Expediting applications

Alongside the two new cancellation proceedings, the USPTO also instituted new rules that may speed up the process of registering trademarks. When the USPTO has an issue with an application that requires a response from the applicant, it issues what’s called an office action. Presently, applications have 6 months to respond to an office action. Starting December 1, 2022, applicants will only have 3 months to respond to office actions, though they may request a three-month extension for a $125 fee. This will speed up the process for pending applications.

These new rule changes are awesome tools for trademark owners and applicants. However, by speeding up the application process and streamlining certain opposition proceedings, it is more vital than ever to consult a knowledgeable trademark attorney before deciding to file for federal trademark protection. Let our experienced attorneys guide you through the brand-building process by contacting us at 855-473-8474, or submitting a form here through our online referral service. 

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