New U.S. trademark opposition and cancellation laws will be effective December 27, 2021.
Practitioners should take note of new laws that will effect U.S. trademark opposition and trademark cancellation proceedings at the end of this year.
The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020 and will be implemented by December 27, 2021. The goal is to give the Director and third-parties tools to reduce trademark clutter and deadwood to further protect the integrity of the Register. It also has other implications in district court proceedings.
Specifically, the TMA:
- Codifies Letter of Protest procedure that allow third parties to submit evidence during the examination of trademark applications (giving Examiner two months to respond)
- Gives the USPTO authority to shorten response times to office actions to 60 days up until six months. if less than six months, then applicants will be permitted to file extensions of time up to six months
- Provides new ex parte challenges to trademark registrations via expungement and reexamination proceedings
- Clarifies that irreparable harm can be presumed in district court requests for injunctive relief upon a finding of trademark infringement (or a showing of likelihood of success on the merits for preliminary injunctions).
II. Ex parte challenges to registrations
A. Expungement. A party can file a petition to request that the USPTO Director institute a proceeding to remove goods or services from a third-party’s registration on the basis that the Registrant never used those particular goods or services in commerce. Expungement procedures must be brought between three to ten years after the registration date.
B. Reexamination. A party may file a request for the USPTO to remove some or all goods or services in a trademark registration. The basis for reexamination is that the trademark was not in us in commercewith the specific goods or services on or before a relevant trademark filing dates. A reexamination request must be brought within the first five years after the trademark registers. It will often apply to situations where a questionable specimen of use was submitted during examination of the underlying trademark application.
In either of the above cases, the Director also has the authority to unilaterally institute an expungement or reexamination procedure.
III. Process for Ex parte challenges:
- File a petition to Director;
- The Director will determine whether the expungement or reexamination 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 so, the Director will grant the petition, institute the proceeding, and require the registrant to respond with evidence of use or excusable nonuse.
- Based on consideration of all the evidence, USPTO will decide whether to remove some or all of the challenged goods or services in the registration. If denied, no new or further ex-parte expungement or reexamination challenges will be permitted against those same goods or services. If granted, the registrant may appeal the decision to the TTAB and after that to the U.S. Court of Appeals for the Federal Circuit.