The use of a trademark in commerce is an important aspect of U.S. trademark law; however, an increasing number of trademark registrations have been obtained and maintained for marks that are not in use in U.S. commerce. As part of the Trademark Modernization Act of 2020 ("TMA"), new procedures are now available to cancel such trademark registrations.
Starting December 27, 2021, the U.S. Patent and Trademark Office ("USPTO") began accepting petitions to reexamine or expunge trademark registrations from the federal register. There is no standing requirement to file a petition. The goal of these two types of proceedings is to provide a faster, more efficient, and less expensive alternative to a cancellation proceeding before the Trademark Trial and Appeal Board ("TTAB").
With the new expungement proceeding, any party may request the cancellation of some or all of the goods or services in a registration on the basis that the registrant never used the trademark in commerce with those goods or services. This proceeding must be requested between three and 10 years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the 10-year limit.
The new reexamination proceeding provides for 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 on or before the date such use was claimed. For a use-based application, the applicable date is the initial application filing date. With an intent-to-use application, the relevant date is the later of the date on which the amendment to allege use was filed, or the date that the deadline for filing the statement of use expires. A petition for reexamination must be made within the first five years after registration.
Additionally, the TMA added a new ground of expungement for TTAB cancellation proceedings against registered trademarks that have never been used in commerce. This ground for cancellation will be available any time after the first three years from the registration date.
These new and improved tools should help remove "deadwood" registrations, allowing brand owners to have greater confidence in the reliability of the trademark register when determining whether to adopt a new trademark or expand into a new good or service using an existing trademark.
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