Reexamination and expungement – a potential cost saving alternative to cancellation proceedings
The Trademark Modernization act added two new procedures called “expungement” and “reexamination” for contesting trademark registrations, and added “nonuse” as a new ground for cancellation proceedings.
Expungement and reexamination proceedings can be filed by any third party. The initial burden is on a petitioner to submit a prima facie case of non-use to the USPTO. If this petition is successful, then the burden shifts to the trademark registrant to establish use. The petitioner’s involvement ends when the USPTO Director institutes the trademark examination or expungement proceeding.
Reexamination
Reexamination proceedings allow third parties to request cancellation of a registration on the basis that the mark was not in use in commerce on or before the filing date of the application or the deadline to file statement of use.
Expungement
Expungement proceedings let third parties request cancellation of a mark on the basis that the mark has not been used in commerce on or in connection with some or all of the goods or services recited in the registration.
New Grounds of Cancellation
A cancellation proceeding to cancel a trademark may now be brought fourth on the basis that a registration has never been used in commerce.
This new option to cancel a trademark does not require the petitioner to show the registrant’s intent not to resume use.
A few more key points under The Trademark Modernization Act
Letter of Protest: The Office now has 2 months to take action on a Letter of Protest. Before the enactment of the new policy, the Office had no deadline to take action.
Showing Irreparable Harm for an Injunction: Resolving some confusion on the issue, the TMA specifies that irreparable harm can be presumed upon the grounds of likelihood of confusion.
Response to Office Action Time: In general, the deadline for responding to trademark office actions has been cut from 6 months to 3 months. This new 3-month deadline can be extended to 6 months for a fee. The new rules take place on December, 2022.