Suppose that you want to register a trademark that identifies a source of goods or services for your business. What if you file a federal trademark application and the U.S. Patent and Trademark Office refuses registration of the trademark based on a likelihood of confusion with another trademark registration? Can you cancel the cited trademark registration with the U.S. Patent and Trademark Office because of non-use in commerce? The answer is “YES!” if the trademark has been abandoned for non-use or never been used in commerce or before a particular relevant date.
Under U.S. trademark laws, a petition for cancellation of a trademark registration may be filed at any time by any person who believes that he is or will be damaged. For trademark registrations within five years, the grounds for cancellation of a trademark registration include that the trademark has been abandoned due to nonuse with intent not to resume use and nonuse for three consecutive years. For trademark registrations older than five years, a petition for cancellation of trademark registration is enumerated in Trademark Act § 14, 15 U.S.C. §1064, which provides for cancellation of a trademark registration that has been abandoned for non-use. In either situation, this means that the trademark has been used in commerce, but subsequently was abandoned for non-use.
Abandonment of a trademark is defined in the Trademark Act under Section 45, 15 U.S.C. § 1127. Under Section 45 of the Trademark Act, “a mark shall be deemed to be abandoned “[w]hen its use has been discontinued with intent not to resume such use. Intent not to resume may be inferred from circumstances. Nonuse for 3 consecutive years shall be prima facie evidence of abandonment. “Use” of a mark means the bona fide use of such mark made in the ordinary course of trade, and not made merely to reserve a right in a mark.” See, e.g., Linville v. Rivard, 41 U.S.P.Q.2d 1731 (T.T.A.B. 1996), aff’d, 133 F.3d 1446, 45 U.S.P.Q.2d 1374 (Fed. Cir. 1998); Imperial Tobacco Ltd. v. Philip Morris Inc., 899 F.2d 1575, 14 U.S.P.Q.2d 1390 (Fed. Cir. 1990); Lewis Silkin LLP v. Firebrand LLC, 129 U.S.P.Q.2d 1015, 1020 (T.T.A.B. 2018) (discussing pleading requirements for a legally sufficient claim of abandonment); City National Bank v. OPGI Management GP Inc./Gestion OPGI Inc., 106 U.S.P.Q.2d 1676-79 (T.T.A.B. 2013) (abandonment of a registration under Trademark Act § 44(e), 15 U.S.C. § 1126(e), based on over three years of nonuse where respondent did not use mark with recited services since at least the issuance date of the involved registration and where the nature of the use shown by respondent did not constitute use in commerce); ShutEmDown Sports Inc. v. Lacy, 102 U.S.P.Q.2d 1036 (T.T.A.B. 2012) (more than three years of nonuse, commencing with filing date for majority of the identified goods, and no evidence rebutting prima facie showing); Auburn Farms, Inc. v. McKee Foods Corp., 51 U.S.P.Q.2d 1439 (T.T.A.B. 1998).
On December 27, 2020, the United States implemented the Trademark Modernization Act (TMA) to allow trademark registrations to be removed or canceled for non-use. The TMA allows a person to file a petition with the USPTO to request that the Director institute a proceeding to expunge (remove) or reexamine a trademark registration for a trademark that either has never been used in commerce or was not used in commerce before a particular relevant date. Under the TMA, both petitions generally require a verified statement establishing that a reasonable investigation was conducted to determine whether the trademark had been used in commerce with specified goods or services, evidence, and associated fees.
As to expungement (removal), the petition may request that the USPTO remove some or all of the goods or services in a trademark registration because the registrant never used the trademark in commerce with those goods or services. However, the petition must be filed between three to ten years after the registration date. In addition, the petition may be filed within three years of the TMA’s implementation date for trademark registrations older than ten years after the registration date.
As to reexamination, the petition may request that the USPTO remove some or all goods or services in a trademark registration on the basis that the trademark was not in use in interstate commerce with those goods or services on or before a particular relevant date. For example, this type of proceeding would address the date the underlying use-based trademark application was filed, the date an Amendment to Allege Use for an intent-to-use-based trademark application was filed, and the expired period of time for filing a Statement of Use for an intent-to-use based trademark application. This petition must be brought within the first five years after the date of the trademark registration and is generally directed at trademark registrations where a questionable specimen showing use in commerce of the trademark was submitted during the examination of the trademark application.
When a petition is filed for either expungement or reexamination of a trademark registration, the Director will determine whether the petition establishes a prima facie case that the trademark was never used in commerce or was not in use in commerce as of the relevant date. If this is the case, the Director will grant the petition, institute the proceeding, and require the trademark registration owner to respond with evidence of use or excusable nonuse. Based on consideration of all the evidence, the USPTO will decide whether to remove some or all of the challenged goods or services in the trademark registration. If the USPTO determines that the trademark registration owner had used the trademark with some or all of the challenged goods or services in either the expungement or reexamination proceeding, no new or further ex parte expungement or reexamination proceeding will be permitted against those same goods or services. If the USPTO does remove some or all of the goods or services, the trademark registration owner may appeal this decision to the Trademark Trial and Appeal Board, and, after that, to the U.S. Court of Appeals for Federal Circuit.
In summary, after the trademark has been used in commerce, U.S. trademark registrations can be canceled based on abandonment of the trademark due to nonuse with intent not to resume use and nonuse for three consecutive years. Now, the TMA allows a person to file a petition with the USPTO to request that the USPTO Director institute a proceeding to expunge (remove) or reexamine a registration for a trademark that either has never been used in commerce or was not used in commerce before a particular relevant date. As such, you may want to file a petition for cancellation of the cited trademark registration based on abandonment for non-use, or a request for expungement or reexamination of a trademark registration based on non-use for the trademark never being used in commerce or before a particular relevant date. If the proceeding is successful, the cited trademark registration will be removed and the trademark registration should proceed to publication and hopefully, eventual registration.