Just over half a year since the Trademark Modernization Act came into force and the numbers are already offering a valuable glimpse into how the legislation is being used. In February 2022, 46 petitions had been filed under the act. As of June 2022, that figure had grown to more than 100. So far, the UPSTO has granted petitions and initiated proceedings in more than a third of cases, a decent success rate for an act in its infancy.
How the act is being used
As covered in a previous article, as of February 25, 2022, 46 petitions had then been filed under the act. Of those, 26 were for expungement and 20 for re-examination. In the four months since, the number of total petitions has about doubled. As of June 22, 2022, 56 petitions for expungement have been filed and 50 for re-examination. Of the 106 petitions filed to date, the USPTO has reached a decision on more than half of them (64), granting 43 and initiating proceedings in each of them, for a success rate of around 67%, denying 21 petitions.
Four proceedings have been initiated but were later terminated upon a finding of sufficient use in commerce. A petitioner filed three re-examination petitions against three marks for WATERBIRD and designs, another filed an expungement petition against VSMASH. The office terminated the re-examination and expungement proceedings after reviewing evidence submitted by the registrants indicating that they satisfied the use in commerce requirement.
So far, only one registration has been cancelled – SURFSTAR WAKE & Design (Registration Number 5239764) – because the registrant failed to respond to the petition and corresponding office action within the three-month statutory window.
The office appears to be taking around two months to issue a decision on a petition although some decisions come sooner and some later depending on whether the office requests follow-up information from the petitioner.
Expungements currently outpace re-examinations, but not by much. However, the data tracks the limited window of opportunity to challenge marks that predate the 10-year limit on re-examinations (37 CFR §2.91(b)(1)).
Caption: petitions filed as of 22 June 2022, source: https://www.uspto.gov/trademarks/apply/expungement-and-reexamination-petitions-received
This article originally appeared in World Trademark Review Weekly on June 30, 2022 and is reprinted with permission.