Two proceedings under the Trademark Modernization Act became actionable today, December 27, 2021. This is first day in the history of the United States trademark law to file for expungement or reexamination. The purpose of this is to attack the registration validity. Specifically, somebody falsely or incorrectly claims non-existent use of a product or service in commerce.
Purpose of Reexamination and Expungement Proceedings
The aim of this is to remove dead wood and fraudulent trademark registrations from the trademark register. So the typical way to fix this is to file a Cancelation Proceeding. That is currently $600 dollars per class, per trademark with a Trademark Trial and Appeal Board (TTAB). We go through a lengthy proceeding before a panel. There we establish that there wasn’t use of a product or service in commerce as alleged by the registrant.
Proceedings are before Trademark Examining Attorney
Under either the expungement or reexamination proceedings, the matter goes to the trademark examining attorney with a $400 dollar fee. We put forth evidence of why the trademark use does not exist.
Expungement Proceeding
In expungements we allege no use ever existed of the trademark for the products or service in commerce. This has a unique window. For the first three years after registration, we cannot file an expungement. After that, we have a seven-year window in which we can file this expungement. Once the registration hits ten years, it’s in its safe harbor. It cannot be attacked under the allegation that the mark was never used in commerce for these particular goods and services. There is a temporary exception. Through December 27th, 2023, even if a registration is ten years or older, you can still file an expungement.
Reexamination Proceeding
The alternative to this is reexamination, and this is where we attack the alleged use date. A lot of in-use applications allege I’ve been using it for the last 50 years prior to filing. But that’s not relevant here. The date in question is going to be the federal filing date for the in-use application. If our opponent filed it as an intent-to-use and then submits an amendment to alleged use (AAU), it’s going to be on the date that they filed that AAU that we challenge.
The third option is when the registrant files as an intent-to-use, it goes through publication and allowance. The date that we challenge under a reexamination is not the filing date of the statement of use. Nor is it the date that the statement of use alleges. Rather, the relevant date is the deadline to file the statement of use.
Unlike expungement, a reexamination is fillable right after registration. We don’t have a three year window to wait. But like incontestability after five years, the mark goes into a safe harbor and we can’t allege this reexamination. We would go to the Trademark Trial and Appeal Board on some other basis like fraud.
How Proceedings Work
The petitioner makes the request. It’s $400. We put forth evidence of non-use and file it. It goes to the trademark examining attorney. They issue an office action if they find a prima facie case exists and that office action goes to the registrant. The registrant has three months to respond. They can get an extra month for $125 dollar fee and decide what they want to do.
The registrant can either not file a response and then the registration could be canceled in whole or in part as to what we attacked. Alternatively, they can submit evidence of use, or they can simply delete and say, you know what? You’re right. I wasn’t using these particular items. They can fix the registration. And of course, all this achieves the purpose of the system, namely, to make the registration system more accurate and to remove any fraud.
If the registrant does submit evidence and say no, I actually was using this in commerce and they fail to get the desired result from the trademark examining attorney, the registrant may appeal this to the Trademark Trial and Appeal Board.
Shortened Response Periods
The response periods are really the last element of the Trademark Modernization Act that’s going to impact day-to-day practice. We’ve had this six month extended time to respond to trademark office actions. I never thought that was particularly useful because when you have a cited registration or pending application against you, you’re just waiting and waiting for these six months to expire to see if anything is going to happen on that application. Accordingly, this new 3-month limit should tighten this up similar to what we see in patent prosecution. And like patents, we can get an extension. For trademark office actions $125 will get another three months and now we are back into our six-month extension window.
So the objective is to clean out the system where somebody’s got an office action. Maybe it’s a fatal office action. It’s a 2(d) likelihood of confusion or generic refusal or something that really the applicant cannot effectively overcome. And if they don’t respond in three months and they don’t request an extension, then that application goes abandoned and it opens it up for another applicant to potentially protect their brand as well.
Strategic Use of Response Periods
A lot of times we see registrations we know are no longer used in commerce. They are essentially dead wood in the system. One option is to file a cancellation proceeding with the Trademark Trial and Appeal Board. Our strategy was sometimes intentional delay. We extend our response periods out for six months for the initial refusal and then maybe another on a response. In doing so, we wait out the natural death of a cited registration for non-renewal. That is still possible. But we’re going to have to pay $125 fee to get these six month extensions.
This is not of immediate concern. The USPTO computer systems for trademarks are built for that six-month response windows. That must change. This will delay implementation of this shortened response period until December 1, 2022. Thereafter, their systems will accommodate the shortened response times.
Conclusion on Trademark Modernization Act Proceedings
So the big ticket items of the Trademark Modernization Act, are effective today, December 27th, 2021. Those are the expungement and the reexamination proceedings. This gives us a new pathway, hopefully to be more efficient. The framework will clean up fraudulent registrations or ones that were just mistakenly issued where the products or services were not actually used in commerce.
