Basically, it has become clear over the last few years that there is a lot of “deadwood” among the trademarks that are officially registered with the US Patent & Trademark Office (“USPTO”). As a result, Congress passed the Trademark Modernization Act (“TMA”) to help the USPTO begin resolving the problem. Essentially, the TMA allows almost anyone to file proceedings to cancel trademarks that have never been used in interstate commerce or which have not been used in connection with some or all of the classes of goods/services for which the trademark was applied for. In general, a trademark must be used with at least one class of goods or services. But many applications seek registration for use with multiple classes of goods/services. But, in fact, in many cases, the trademark does not end up being used with all of the classes specified in the application. This presents a barrier to others who may want to use a similar trademark for those other classes of goods/services. The TMA was passed as an effort to resolve some of these problems.
Two new proceedings are now allowed pursuant to the TMA. First, any person may file an expungement proceeding where a registered trademark has never been used in commerce in connection with any goods or services. Second, a reexamination proceeding can be filed when a registered trademark is not being used with some of the classifications specified in the original application.
What is the process?
The first step is to file proper papers with the USPTO seeking expungement or a reexamination. The papers are filed electronically and there is a $400 filing fee. An expungement proceeding can be filed from three to 10 years after a trademark has been registered. However, the 10-year limitation does not go into effect until the end of 2023. Until that time, EVERY registered trademark — regardless of age — can be subject to an expungement proceeding. A reexamination proceeding can be filed almost immediately after registration but only up to five years after registration. The petitioner must support the filing with proper and extensive documentation showing non-use of the trademark. Evidence is required, not mere allegations.
Next, the USPTO will examine the filings to ensure the allegations are prima facie valid. If the USPTO determines that the proceedings are facially valid, then the owner of the trademark will be given an opportunity to respond in writing to the filings.
To defeat the claims of non-use, the owner of a registered trademark must present evidence of relevant use (or excusable non-use). In theory, this should be “easy” for the owner to prove. But, in practice, many owners may not respond, in which case, the decision by the USPTO will be something like a “default” judgment. If a response is filed, the USPTO will evaluate the evidence presented and, eventually, the USPTO will make a decision and either deny the petition or declare that the registration is invalid or canceled.
In addition to filings made by third parties, the USPTO is also given the authority under the TMA to start proceedings on its own initiative.
For more information or if you have questions about creating and registering a trademark, contact the trademark lawyers at Revision Legal at 231-714-0100.