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Cancellation of a registered trademark for non-use soon could be easier

November 22, 2017
Post by Xiaohong Liu, Ph.D.

According to Chief Administrative Trademark Judge Gerard F. Rogers in his blog post on the Director’ Forum last week, PTO found out through a pilot program that “more than half of registrations being maintained include at least some goods or services for which the registered mark is not actually being used.” “These registered trademarks that are not actually in use in commerce unnecessarily block someone else from the Register” and “Trademark Trial and Appeal Board (TTAB) is considering revision of its rules to allow a party to seek cancellation of registrations for marks no longer in use or that never were in use, through streamlined proceedings.”
 
These new streamlined cancellation proceedings would allow a party to clear the blocking mark from the Trademark Register, by providing evidence of nonuse, quickly and efficiently, instead a full cancellation proceeding in which the party must bring all available claims or run the risk of being barred from raising them in the future. In the new streamlined cancellation proceedings, the challenger can focus solely on claims of nonuse or abandonment, specifically, (1) abandonment of one or more goods/services (nonuse plus intention not to resume use); or (2) no use for one or more of the goods/services prior to the relevant date of an allegation of use, without endangering its option to bring other claims in the future. Counterclaims by the registrant would not be permitted.
According to Chief Judge Rogers,
 
Procedures that would facilitate speed and efficiency of these proceedings could include: requiring the challenger to submit evidence sufficient to support its grounds at the time of filing the petition, and the registrant to submit proof of use of the mark with its answer; limiting discovery to the challenger’s standing if it would prove dispositive; and an abbreviated schedule with no oral hearing. The TTAB would commit to determination of the cases within an expedited timeframe, potentially 70 days from commencement (in cases of default by the registrant) to approximately 170 days from commencement for cases decided on the merits. The cases also could be less expensive, with lower fees and legal costs, due to the relative simplicity of the proceedings.


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