Two New ex Parte Trademark Cancellation ProceedingsNovember 29, 2021

On December 18, 2021, new regulations implementing the Trademark Modernization Act of 2020 (“the TMA”) will officially go into effect allowing individuals, businesses, and the USPTO to clear unused registered trademarks from the federal trademark register. New ex parte expungement and reexamination proceedings are said to provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the TTAB. Petitions requesting institution of proceedings for reexamination or expungement will be accepted starting December 27, 2021.

In the new expungement proceeding, between three and ten years after the registration date, any party may request cancellation of some or all of the goods or services in a trademark registration because the registrant never used the trademark in commerce with said goods or services. For the new reexamination proceeding, within the first five years after registration, any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date, often the filing date.

For each proceeding, the petitioner must include a verified statement that establishes a reasonable investigation was conducted to determine whether the trademark was used in commerce with the specified goods or services including evidence supporting a prima facie case of nonuse in commerce. If the Director determines a prima facie case has been established, the proceeding will be instituted and the petitioner and the trademark registrant will both be notified. The petitioner’s involvement then ends and the USPTO issues an Office Action to the registrant. The registrant may respond and show use of the trademark, and the USPTO may issue one or more additional Actions. The USPTO will consider all of the evidence and decide whether the registration should be cancelled as to some or all of the challenged goods and services.

Any good or service cancelled as a result of these two new proceedings will no longer be covered by the trademark registration.

The TMA was signed into law on December 27, 2020 as a part of the COVID-19 relief and government-funding bill. Key portions of the TMA include allowing submission of evidence by third parties during trademark examination, a statutory presumption of injunctive relief in trademark infringement proceedings, and the new procedures to challenge trademarks due to non-use described herein. Most of these changes have an effective date of December 27, 2021, except for the rebuttable presumption of irreparable harm that took effect immediately. The TMA was passed to give individuals and businesses additional tools to defend and enforce their trademarks and to challenge the trademarks of others.

Julie L. Spieker is an Intellectual Property Attorney in the MVS Biotechnology & Chemical Practice Group as well as the Mechanical and Electrical Practice Group. To learn more, visit our MVS website , or contact Julie directly via email .

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