Is an unused registered trademark preventing you from clearing or registering your mark? Or was the blocking registration filed for goods or services that were not in use when the registrant declared that they were? As we reported in The Trademark Modernization Act Establishes New Trademark Cancellation Procedures earlier this year, the Trademark Modernization Act's ("TMA") new procedures for cancelling unused registrations, or registrations with goods and services that were not in use at the time of declaration, are now effective.
Any party, regardless of standing, can challenge a registered trademark by filing: i) an expungement proceeding against a mark that is 3 to 10 years old that has never been used in commerce in connection with the registered goods and services; or ii) a reexamination proceeding against a mark less than 5 years old that was not in use for some or all of the goods when the registrant filed its declaration of use.
Those challenges take place before examining attorneys in the Trademark Office under the supervision of the Director, and do not involve the Trademark Trial and Appeal Board ("TTAB") unless the registrant appeals the outcome. Upon receipt of a challenge to a registered mark that contains adequate evidence of non-use, the Director will issue a post-registration Office Action. The registrant then has three months to respond, which it can extend 30 days for $125. If the registrant does not rebut the prima facie case of non-use, the Director will cancel all or part of the registration depending on the situation. In both cases, the challenger has no further involvement beyond the initial submission.
The TMA has also formalized the procedure for submitting a Letter of Protest against a pending trademark application, which anyone can do by submitting evidence and a fee of $50. The examining attorney then has two months to determine whether to include the submitted evidence in the prosecution file. The applicant still has the opportunity to rebut that evidence in the course of prosecution.
Finally, the time for responding to an Office Action will remain six months until December 1, 2022, when it will be shortened to three months with the option to extend for a further three months for a $125 fee.
Owners of U.S. trademark registrations may wish to review their registrations and consider preemptively deleting goods that were not in use when declared, or re-filing marks filed under Sections 44(e) or 66(a) that were never used. Doing so outside of an expungement or reexamination proceeding is free, while deleting goods within a proceeding costs $250 per class. Mintz's trademark attorneys can assist you in evaluating your trademark portfolio for such a purpose, or in challenging vulnerable third party registrations under the new streamlined procedures.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
