December 23, 2021Client Alert

Trademark Modernization Act Provides New Options to Combat Fraudulently Obtained Registrations Beginning December 27, 2021

In December 2020, the Trademark Modernization Act (TMA) was enacted into law. Among its provisions, the TMA created two new, expedited mechanisms for canceling trademark registrations before the United States Patent and Trademark Office (USPTO): expungement proceedings and re-examination proceedings. These ex parte proceedings are intended, in part, to combat the recent proliferation of trademark registrations fraudulently obtained through fabricated or inaccurate claims of use. They also are expected to provide a substantially faster, more efficient, and less expensive option for petitioners than inter partes cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Regulations implementing these new proceedings have been approved, and petitions requesting expungement or re-examination may be filed beginning December 27, 2021, per the USPTO’s final rule. An overview of each is below.   

Expungement: Any party may petition the USPTO to expunge a registration for a trademark that has never been used in commerce. Expungement petitions may be brought between three and ten years after the registration date for a challenged registration. The ten-year limit will not apply until December 27, 2023, providing an initial two-year period during which older registrations may be expunged. An expungement petition may be used to remove either some or all of the goods or services identified in the registration.

Re-examination: Any party may petition the USPTO to re-examine a trademark registration that was not in use in commerce on or before a particular relevant date (e.g., the date a use-based application was filed, or the filing date for an amendment to allege use for an application initially based on intent-to-use). Re-examination petitions must be brought within five years after the registration date for the challenged registration and may be used to remove either some or all of the goods or services identified in the registration.

An expungement or re-examination petitioner must identify the registration and the goods or services alleged to have never been used or not used as of the relevant date, provide evidence that the petitioner conducted a “reasonable investigation” of the registrant’s non-use, and submit a $400 filing fee per class of goods or services being challenged.  

The petitioner can be any third party and need not be the real party in interest. Although the USPTO can in certain circumstances request disclosure of the interested party, the ability to remain anonymous is another advantage versus a cancellation proceeding in which the interested party must be identified. 

If the USPTO finds that the petitioner has made a prima facie case of non-use, the USPTO will then initiate the expungement or re-examination proceeding by notifying the registrant. The petitioner’s participation in the process then concludes, and the burden shifts to the registrant to provide evidence of use or excusable non-use of the challenged trademark within three months. If the registrant fails to timely respond or provide adequate evidence of use, the registration will be canceled either in whole or in part. If an expungement or re-examination petition is unsuccessful, the USPTO’s decision is not reviewable but the petitioner may still pursue a cancellation proceeding before the TTAB against the challenged registration.

Overall, the new expungement and re-examination proceedings offer trademark owners an expedited and anonymous method for canceling fraudulent registrations that otherwise may serve as a basis for refusal of their trademark applications without incurring the time, costs, and potential risks of a TTAB cancellation action.

If you have questions about expungement or re-examination proceedings under the TMA, or other trademark matters, please contact your Michael Best attorney.

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