Unlike patents and copyrights, which are expressly mentioned in the US Constitution (Article I, §8, clause 8), trademark rights are grounded in use. To enjoy the right to exclude others from using a mark, the owner has to actually use it. And to enjoy a federal registration, the owner has to use the mark in commerce.
The Trademark Modernization Act is designed to provide a more efficient and less expensive tool to rid the federal trademark register of marks for which the use-in-commerce requirement has not been established. In other words, it is designed to ensure an accurate register.
Historically, if individuals or businesses wanted to establish that a registration should be cancelled on the ground of non-use, they had to rely on traditional contested cancellation proceedings before the TTAB. However, now that the act has come into force they can file petitions for ex parte expungement or re-examination proceedings.
Expungement is reserved for a registration of a mark that has never been used in commerce on or in connection with some or all of the goods or services recited. Re-examination is reserved for a registration for a mark that was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date. To initiate either proceeding, a petition must:
- Identify the registration that is the subject of the petition;
- Identify each good or service recited in the registration for which it is alleged that the mark has never been used in commerce;
- Include a verified statement that sets out the elements of the reasonable investigation that the petitioner conducted to determine that the mark has never been used in commerce on or in connection with the goods and services identified in the petition, and any additional facts that support the allegation that the mark has never been used in commerce on or in connection with the identified goods and services;
- Include any supporting evidence on which the petitioner relies; and
- Be accompanied by the fee prescribed by the director.
Section 2.91(d)(2) provides a non-exhaustive list of appropriate sources of evidence and information to support a reasonable investigation. This includes the following:
- State and federal trademark records;
- Websites and other media likely to or believed to be owned or controlled by the registrant;
- Websites, other online media and publications where the relevant goods or services likely would be advertised or offered for sale; and
- Print sources and web pages likely to contain reviews or discussions of the relevant goods or services.
How is the Trademark Modernization Act being used?
As of Feb. 25, 2022, 46 petitions have been filed under the act. Twenty-six of these are for expungement, with the remaining 20 for re-examination. The majority of petitions relate to unique marks but some appear to attack a family of marks.
For individual marks, what jumps out at first glance is the re-examination proceeding initiated for the mark $COIN, which is the ticker symbol for Coinbase Global, Inc., a popular cryptocurrency exchange. For attacks on families of marks, five petitions for expungement have been filed against marks with a formative APEX term: APEX ARRIVA, APEX MOZART, APEX NEMO, APEX RED HOT BURNING, and APEX WONDERLAND.
Why are there more expungements than re-examinations? Well, a petitioner may request an ex parte expungement proceeding in connection with a registration at any time between three and 10 years after the date of registration. However, until Dec. 27, 2023, a petitioner may request an expungement proceeding for a registration that is at least three years old, regardless of the 10-year limit (37 CFR §2.91(b)(1)). Because of this limited window of opportunity to challenge marks that predate the 10-year limit on expungements, the number of expungement petitions should exceed the reexaminations – and this is consistent with the data so far.
The following table depicts the petitions filed as of Feb. 25, 2022.
The Trademark Modernization Act is still in its infancy. Time will tell how many of these proceedings successfully lead to the trademark office canceling the registration. It also remains to be seen how long individuals and businesses will have to wait before seeing a decision.
This article originally appeared in World Trademark Review Weekly on March 10, 2022 and is reprinted with permission.