The enactment of the Trademark Modernization Act and rollout of new expungement and re-examination procedures, as well as adding non-use as a new ground for cancellation in TTAB proceedings, have brought more options for combating trademark registration for non-use. There are advantages to each type of proceeding, and as we now approach six months post-launch, we have some more guidance from the USPTO on best practices.
Pursuing a cancellation at the TTAB is still the most familiar process for many practitioners. The new ground for cancellation based on non-use, as opposed to abandonment, means petitioners can bring a cancellation action at any time three years post-registration. They also do not have to show an intent-not-to-resume use, only that the trademark was never used. As in all TTAB proceedings, the parties benefit from the Federal Rules of Civil Procedure and the Federal Rules of Evidence, as they both participate in discovery, which is not an option in the new ex parte proceedings.
In cases where the registrants opt not to respond to a cancellation action, petitioners often receive default judgments as quickly as three months from filing the cancellation. However, if the alleged non-use is disputed, these cases can follow a similar track to other TTAB cases in terms of the timeframe to resolution and require a significant amount of engagement by both parties.
For parties considering an expungement or re-examination proceeding, the USPTO is reviewing petitions as early as six weeks from filing in some cases, although the process has taken longer in others. If the office initiates the proceeding, the registrant has up to four months to respond; the office will then review the evidence submitted in that response.
It is too early to be certain how long the average re-examination or expungement proceeding will take from start to finish, but it is likely that proceedings will last at least six months, especially if the registrant takes advantage of the full response period, and possibly longer. However, for petitioners, once a re-examination or expungement is instituted, the petitioner no longer has a role in the process. Not having to engage in discovery or other aspects of a case before the TTAB could be beneficial for some petitioners.
As the USPTO and practitioners engage in this new process, there will be a learning curve, and the USPTO has issued a set of “best practices” and has been educating practitioners on some common mistakes. To date, just over 100 expungement or re-examination petitions have been filed with the USPTO, all of which are available for review (links below). Based on the filings received, the USPTO indicated that many common mistakes include providing screen captures and URLs that are too small to read or offering no index of evidence to explain the relevance of each piece of evidence. The USPTO is also looking for evidence of both current and past non-use, which can sometimes be obtained from websites such as archive.org (WayBack machine). If other registrations are cited, the actual documents must be provided and not just referenced through Trademark Status Document Retrieval summaries. And evidence should be provided for each item challenged within a class. Finally, a prima facie case of non-use for the goods or services for which the specimen was offered may be established if there is evidence that the original specimen is fake or digitally altered.
See links below for USPTO resources, including best practices and petitions filed with USPTO:
This article originally appeared in World Trademark Review Weekly on July 7, 2022, and is reprinted with permission.