In the September issue of South Carolina Lawyer, Mike Cicero provides insights into, "New Tools Arrive for Removing Roadblocks to Federal Trademark Registration."
The U.S. Patent and Trademark Office (USPTO) recently created two ex parte proceedings, called expungement and reexamination, to help remove roadblocks that take the form of prior federal registrations owned by others that applicants encounter when applying for federal registrations for their trademarks or service marks.
"The new proceedings are intended to provide streamlined alternatives to existing inter partes proceedings for challenging others' registrations," said Cicero.
Cicero explained that, "Filing a federal trademark application with the USPTO does not guarantee issuance of a registration. USPTO examiners commonly refuse registration on the purported ground that the mark sought to be registered is "likely to cause confusion" with a mark of a prior federal registration, i.e., a registration owned by another that issued from an application bearing an earlier filing date than that of the application being examined."
On November 17, 2021, the USPTO issued regulations to implement portions of the Trademark Modernization Act of 2020. The regulations of interest here, which took effect on December 18, 2021, create the ex parte expungement and reexamination proceedings. "These new proceedings are intended to provide a more efficient and less expensive alternative to a contested inter partes cancellation before the TTAB."
To learn more about these regulations, you can read the full article here.
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