The United States Patent and Trademark Office (USPTO) has rolled out some new procedures of the recently passed Trademark Modernization Act (TMA) that will be helpful for trademark owners and their IP counsel. Two of the most important are as follows:
Expungement and Reexamination of Trademark Registrations.
This procedure will be helpful if you are applying for a trademark and your application is flagged due to a trademark registration that is considered a conflict. If you discover through your fact-finding that the conflicting trademark is not being used in commerce as it states in the registration (i.e., insufficient use or non-use of the goods or services described in the registration), then you can use one of the following methods to possibly cancel the registration and clear the path for your application.
Expungement
An expungement proceeding against a registered mark that is 3 to 10 years old that has never been used in commerce in connection with the registered goods and services will be canceled.
Reexamination
A reexamination proceeding against a registered mark less than five years old that was not in use for some or all of the goods or services when the registrant filed its declaration of use will be canceled.
Any party, regardless of standing, can challenge a registered trademark by filing either of the above. Once this filing is received, the Trademark Office will issue a notice (post-registration Office Action) to the registrant of the potentially bogus registration, and the registrant will have three months to prove that the claim is not valid. If the registrant cannot disprove the claim, the Trademark Office will cancel all or part of the registration.
Previously, the only way to cancel a fake registration was through a long and expensive TTAB cancellation proceeding. This new procedure is a quick and inexpensive way to overcome a sham registration that prevents your mark from registering.
Letter of Protest Decisions
This procedure previously existed; however, it was not very effective. The TMA has updated it so that it is more effective. This tool can be used when you discover that someone has filed a trademark application that you know is fraudulent. Common grounds for filing a letter of protest against a pending application include, but are not limited to, where the following exists: a likelihood of confusion with a prior pending application or registration owned by the protesting party, a term within the trademark that is allegedly generic or descriptive, a notice of a pending litigation matter involving the trademark, a known discrepancy of ownership exists (i.e., a contract exists that contradicts with the applicant), or an inappropriate specimen of use filed as part of the application.
For a nominal fee, anyone can file a letter of protest that details legitimate reasons why the fake trademark application should not be granted registration accompanied by supporting evidence. A USPTO Director first reviews the letter, who decides whether it should become part of the evaluation file that the application’s Examining Attorney should consider. If the Director accepts the letter of protest, the Examining Attorney must consider the evidence submitted in the protest when determining if there are reasonable grounds to refuse registration.
I believe that these two procedures will be valuable tools that your IP attorney can use to protect your brand!
Richard B. Jefferson, Esq.