- Most of the new rules take effect December 14 or December 27, 2021
- Implements new simplified and expedited procedures for
challenging improper claims of "use in commerce" in newly
issued and older trademark registrations
- Allows for challenges to be filed anonymously via a US law firm (although the USPTO Director may require identification of the real party in interest in the case of abusive filings);
- Creates a new "Expungement" Proceeding allowing for the expedited challenge of a registered mark that has never been used in commerce in connection with some or all of the listed goods/services. Expungement Petitions can be filed between the 3rd and 10th year after issuance of the registration and, until December 27, 2023, the 10-year-limit won't apply (allowing for challenges to older registrations);
- Creates a new "Re-examination" Proceeding by which challengers can file a Petition requesting re-examination of a registration on grounds that the mark was not in use on some or all of the listed goods/services on or before either (a) the filing date of a use-based application or (b) the date an Amendment to Allege Use was filed. A Re-examination Petition can be filed during the first 5 years of a registration.
- Both Expungement and Re-examination Petitions must be filed with (1) a $400 fee; (2) a Verified Statement setting forth the elements of a reasonable investigation the challenger conducted to makes its determination of non-use (an Internet search alone is unlikely to be sufficient); and (3) whatever additional evidence is available to support the challenge;
- If a prima facie case of non-use is established, the Director will institute the Proceeding without requiring any further involvement of the Petitioner;
- The Director can also commence proceedings at its own initiative;
- Once the proceeding is instituted, a trademark owner will have 3 months (with a 1 month extension available upon payment of a fee) to file a Response either (1) with evidence demonstrating use or (2) voluntarily deleting the challenged goods/services. Absent a timely Response and the filing of acceptable evidence of use, the challenged goods/services and/or registration as a whole will be cancelled.
- Appeals can be filed with the TTAB or the Director within 3 months of the cancellation decision.
- Starting December 1, 2022, Office Actions issued during examination and post-registration will have a shorter response time of 3 months (rather than 6 months). A 3-month extension will be available for payment of a fee. This new timeline will not apply to Madrid Applications.
- Because the TLA can be weaponized, trademark owners should implement new procedures to capture and save specimens of use for all recent applications and registrations;
- Trademark applications should be narrowly tailored to cover only those goods/services as to which there is actual use or a bona fide intent to use.
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.
