Trademark Modernization Act of 2020: Part 1

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The Nuts and Bolts of Expungement and Reexamination

You may remember our blog post here, discussing the Trademark Modernization Act of 2020, which became law at the end of last year.  To implement the Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) has proposed changes to the trademark rules of practice, which we begin to explore in the following post.  Over the coming weeks and months, stay tuned for further commentary, insights and practice tips on these proposed changes!

According to Commissioner for Trademarks David Gooder, during a recent USPTO virtual roundtable event, “protecting the integrity of the US trademark register is, and will remain for some time, one of our top priorities.”  Keeping the register clear of improperly obtained trademark registrations helps ensure that legitimate businesses can register their marks with the USPTO, and enforce those rights against infringers.

In an effort to combat “cluttering” of the trademark register, the USPTO has proposed new procedures allowing any party, or the Director, to challenge registered trademarks that may not be in use, or were not in use when certain filings were made.

The Trademark Modernization Act provides a new process for ex parte expungement of trademark registrations.  In an expungement proceeding, anyone can ask the USPTO to expunge a registration if the trademark has never been used in US commerce.  This process is intended to target, by way of example, Madrid Protocol and Paris Convention applications that have matured to registration in the USA.  The Trademark Modernization Act also introduces an ex parte reexamination proceeding.  Here, one may petition the USPTO to determine whether a registered mark was in use by a certain date, such as when an application was filed, or when a mark owner filed evidence of use of its mark.  Reexamination proceedings are aimed at cancelling registrations that the USPTO granted based on false and inaccurate statements from mark owners.

In view of these new proceedings, what’s the lesson for trademark owners?  One takeaway is to regularly audit your trademark portfolio.  If you notice that you’re no longer using a given mark on all the claimed products or services, consider proactively deleting these items from your registration now – there’s no fee for voluntary deletions of goods and/or services made outside the context of post-registration affidavit of use filings.  Doing so could save you the effort and expense of defending against an expungement or reexamination proceeding initiated by a competitor.  It’s also a good idea to consistently save and document evidence of use of your marks.  This way, if a third party or the USPTO initiates an expungement or reexamination proceeding, you’ll be able to quickly compile and submit the evidence needed to protect your trademark rights.

In case you’re visual learners like us, the following chart sets out the most significant similarities and differences between the expungement and reexamination proceedings contemplated by the proposed rules.

Expungement Reexamination
Time for Filing Until December 27, 2023, at any time after 3 years of registration

After December 27, 2023, 3-10 years after registration

First 5 years after registration
Petition Fee $600/class $600/class
Basis of Proceeding Mark has never been used in commerce on or in connection with some or all of the goods and/or services Mark was not in use in commerce on or in connection with some or all of the goods and/or services as of:

  • For applications filed under Section 1(a), the filing date of the application; or
  • For applications filed under Section 1(b), the later of (1) the filing date of an amendment to allege use under Section 1(c) or (2) the deadline for filing a statement of use under Section 1(d)
Petition Requirements Made in writing and includes:

  • Filing fee
  • Registration subject to petition
  • Basis for petition
  • Petitioner’s name, domicile address, and email
  • Designation of attorney, if applicable
  • Identification of goods and services subject to petition
  • A verified statement setting forth (1) elements of reasonable investigation of nonuse; (2) a concise statement of the basis for the petition; (3) documentary evidence
Same as expungement
Evidentiary Standard Reasonable investigation Reasonable investigation
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Date Published: June 25, 2021
Kelly M. Horein is an associate on the Trademarks team of the firm’s Intellectual Property Practice Group. Kelly’s practice encompasses all aspects of brand management, including domestic and international trademark clearance, registration, and enforcement. When litigation is necessary, Kelly assists clients with disputes, including trademark opposition and cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, and trademark litigation in federal court. In addition, Kelly prepares and negotiates intellectual property agreements, counsels businesses on website development and social media issues, and assists them with assessing product packaging for compliance.
Katlyn M. Moseley represents clients in a variety of complex commercial litigation matters, with a particular focus on trademark infringement actions. Katlyn also represents clients in the health industry in government investigations and litigation, particularly in False Claims Act (FCA) matters. She has experience handling all aspects of civil litigation, including discovery, dipositive motions, trial preparation and oral advocacy.