To implement the Trademark Modernization Act of 2020 (TMA), we’re proposing changes to the Trademark rules of practice. The proposed changes, when implemented, will give U.S. businesses new tools to clear away unused registered trademarks from the federal trademark register and will give the USPTO the ability to move applications through the system more efficiently. 

Read the notice of proposed rulemaking (NPRM) to learn more about these proposed changes. Because the procedures discussed below are based on proposed rulemaking, they are subject to change and will not take effect until after a final rule is published.

New procedures

Two ex parte proceedings to cancel unused registered trademarks

The TMA’s new expungement and reexamination proceedings will provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). 

Expungement proceeding

Third parties will be able to request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. 

Time limit. This proceeding must be requested  between three and ten 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 ten-year limit.

Reexamination proceeding

Third parties will be able to request cancellation of some or all goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.

• When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.
• When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

Time limit. This new procedure must be requested within the first five years after registration.

Any goods or services that are cancelled as a result of these proceedings will no longer be covered by the trademark registration.

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How to request institution of proceedings

Under the proposed rules, any party may submit a petition requesting that the USPTO Director institute a proceeding to cancel some or all of the goods or services identified in a trademark registration for which the trademark either has never been used in commerce for expungement or was not used in commerce before a particular relevant date for reexamination.

The request will need to include: 

• A verified statement that establishes a reasonable investigation was conducted regarding whether the trademark had been used in commerce with specified goods or services and any additional facts that support the nonuse allegation
• Evidence 
• The proposed $600 per-class fee

We’ll upload the petition containing the request and the evidence into the registration record viewable through the Trademark Status and Document Retrieval (TSDR) system. We also plan to send a courtesy email notice to the registrant or its attorney.

How a decision to institute is reached

If the petition to request institution of an expungement or reexamination proceeding establishes a prima facie case that the trademark was never used in commerce or was not in use in commerce as of the relevant date for the specified goods or services, the USPTO Director will institute a proceeding. If a prima facie case isn’t established, the Director will not institute a proceeding. 

At this point in the process, the party who submitted the request will no longer be involved in the proceeding, but would be notified of the decision whether to institute the proceeding.

What happens during a proceeding

Examiner issues office action. If a proceeding is instituted, an examiner will issue an office action that notifies the registrant or its attorney about the proceeding and requires the registrant to respond with evidence of use (and/or excusable nonuse in expungement proceedings involving registrations with underlying applications based solely on §44(e) or §66(a)) for the goods or services in question. 

The registrant has two months to respond. The registrant may respond by providing appropriate evidence and/or deleting from the registration some or all of the goods or services at issue. If the registrant does not respond by the due date, the proceeding will be terminated and the registration cancelled in whole or part, as appropriate. 

We make a determination. If the registrant provides a timely response, we will consider all the evidence and decide whether the registration should be cancelled as to some or all of the challenged goods or services. If we determine that:

• The registrant did not show use (or excusable nonuse for expungement proceedings involving registrations with underlying applications based solely on §44(e) or §66(a)) of the trademark for some or all of the challenged goods or services, we will issue a final action setting forth the decision that the registration should be cancelled as to the challenged goods or services. 
  
  Appeal or request reconsideration of decision. The registrant will have two months to request reconsideration of this decision or to appeal it to the TTAB. If the registrant doesn’t file a request or appeal, we will issue a notice of termination of the proceeding, specify the final determination regarding the goods or services at issue, and order cancellation of the registration in whole or in part.
   
• The registrant did show use or establish excusable nonuse of the trademark with some or all of the challenged goods or services, the registration would not be cancelled for those goods or services.

Actions the USPTO Director may take

The USPTO Director may institute these new proceedings, even without a petition requesting institution, if the Director discovers information that supports a prima facie case that the trademark has:

• Never been used in commerce with certain goods or services
• Not been used in commerce as of the particular relevant date with certain goods or services covered by the registration 

The TMA gives the Director the discretion to limit the number of petitions requesting expungement or reexamination that can be filed against the same registration. However, the proposed rules provide no limit for the following reasons: 

• To encourage clearing from the register any unused trademarks
• To determine whether existing legal safeguards are sufficient to protect registrants from possible misuse of the proceedings

Estoppel, co-pending proceedings, and suspension

The proposed rules include provisions for estoppel, bar co-pending proceedings that involve the same registration and the same goods or services, and authorize suspension of action by the USPTO or the TTAB based on an expungement or reexamination proceeding. The estoppel provisions prevent institution of any future proceedings against the goods and services in a registration that have been the subject of a previous proceeding and where acceptable proof of use was provided.

Changes to existing procedures

New ground for TTAB cancellation proceeding

The proposed rules will allow parties to request the cancellation of a registered trademark through the TTAB on the ground that a registered trademark has never been used in commerce. This ground for cancellation will be available at any time after the first three years from the registration date.

Shorter three-month response period for office actions

Under the proposed rules, applicants (excluding Madrid Section 66(a) applicants) and registrants will be required to respond to office actions within three months. This is to promote greater efficiency in examination. This shorter response period will also apply to post registration office actions.

Applicants and registrants will have the option to request a single three-month extension of time to respond for a fee of $125. If we do not receive the extension request or response within the first three months or the application will be abandoned or the registration will be cancelled or will expire. Due to the extensive changes needed to our information technology systems, we have proposed delaying implementation of this shorter response period until June 27, 2022.

Third-party submissions during examination (letters of protest)

The TMA provides statutory authority for the longstanding USPTO letter of protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a pending trademark’s registrability. The TMA sets a two-month deadline for us to act on these submissions, authorizes us to continue to charge a fee for them, and provides that our decision on a letter of protest is final and non-reviewable.

Other rule changes

Attorney recognition until revocation or withdrawal

Under our current rules, recognition ends when an application is abandoned or a registration expires or is cancelled, or when the applicant or registrant revokes the attorney appointment or the attorney withdraws from representation. Under the proposed rules, recognition would continue when, for example, an application abandons, post-registration documents are filed and accepted, or a registration expires or is cancelled. In addition, change of ownership would not result in a change in attorney recognition, unless a proper revocation or withdrawal is filed. 

These changes will make our rules more consistent with our current practice and facilitate implementation of a role-based, access-controlled system for applications and registrations that we’re developing. Such a system will increase security in our filing system and allow us to track and combat misleading non-USPTO solicitations sent to applicants and registrants.

Attorney withdrawal requirements codified

The proposed rules clarify attorney obligations when withdrawing from representation and differentiate the grounds under which the attorney may request to withdraw versus those situations where an attorney must request withdrawal. This will allow us to be consistent with the USPTO Rules of Professional Conduct.

Court orders concerning registrations

The proposed rules codify the USPTO’s longstanding procedures concerning action on court orders cancelling or affecting a registration under 15 U.S.C. §1119, which are currently described in Section 1610 of the Trademark Manual of Examining Procedure (TMEP). The USPTO requires submission of a certified copy of the court order and normally does not act on such orders until the case is finally determined. 

When will these proposed rule changes become effective?

After we review your comments regarding these proposed rule changes, we will draft a final rule that will go into effect by December 27, 2021, except as to the flexible response period provisions which we proposed to go into effect on June 27, 2022.

Submit feedback

Submit comments to the proposed rule changes at www.regulations.gov from Tuesday, May 18, 2021, to Monday, July 19, 2021. To submit your comments, enter docket number PTO-T-2021-0008 on the homepage and click “search.” Locate the NPRM within the search results and click on the “Comment Now!” icon. Complete any required fields and enter or attach your comments. Learn more about how to comment in the NPRM.

We are holding a number of public roundtables on the NPRM and invite you to participate to ask clarifying questions and provide informal comments on the NPRM. Formal comments must still be submitted as noted above. For more information and to sign-up for a roundtable, see:

• First roundtable on June 1
  • Watch the video recording
  • View the presentation slides
     
• Final roundtable on June 14 

Read the public comments that helped inform us about what to include in the TMA NPRM. Also, check out the March 1st roundtable, where we gathered public feedback on implementing the TMA. You can:

• Watch the video recording.
• View the presentation.

 

Dudas o Consultas? Las esperamos! http://donmarca.com

 

Source: USPTO.gov