On December 18, two new procedures will be available for challenging U.S. trademark registrations. On that date, new regulations from the U.S. Patent and Trademark Office (USPTO) will take effect, as part of the USPTO’s implementation of the Trademark Modernization Act of 2020.
The new procedures are an “expungement proceeding” and a “reexamination proceeding,” both of which provide a faster and less expensive method compared to a “cancellation proceeding” at the Trademark Trial and Appeal Board (TTAB). Both new procedures are ex parte, meaning that the challenger does not participate in the proceeding after its initial filing. The previously—and still—available cancellation proceeding before the TTAB is inter partes, meaning that both the challenger and the trademark registrant participate in the proceedings.
Expungement Proceedings
A trademark registration identifies the mark (typically a brand name or other words) and lists the goods or services that the mark is used with. In the new expungement proceeding, anyone may request that a trademark registration be cancelled for some or all of the goods or services listed in the registration based on the trademark registration owner’s failure to ever use the trademark in commerce in connection with the goods or services identified.
An expungement proceeding must be filed between three and ten years after the date of registration. Because this procedure is newly available, however, the ten-year limit will not apply to any proceeding filed by December 27, 2023.
Reexamination Proceedings
In the new reexamination proceeding, anyone may request that a trademark registration be cancelled for some or all of the goods or services listed in the registration on the ground that the trademark was not used in commerce in connection with those goods or services on or before a key date. For a trademark registration based on the registrant’s statement it was using the mark in commerce, the key date is the date the application for registration was filed. For a trademark registration based on the registrant’s statement of an intent to use the mark in commerce, the key date is the date a statement of use was filed or the deadline for a statement of use, whichever is later.
A reexamination proceeding must be filed within five years after the date of registration.
Changes to Cancellation Proceedings
Cancellation based on expungement (i.e., failure to use the mark in commerce) will now be available in cancellation proceedings before the TTAB. This challenge becomes available three years after the registration date.
The combination of new procedures provides a new opportunity for companies to clear away unused trademarks.
