The Trademark Modernization Act of 2020 (the Act), signed into law on December 27, 2020, will give trademark owners powerful new tools to cancel improperly granted trademark registrations and to stop pending registrations from being granted. By no later than December 27, 2021, the Act requires the U.S. Patent and Trademark Office (USPTO) to implement new procedures for cancelling registrations or refusing to register pending applications. The Act is designed to make it less time-consuming and expensive for trademark owners to cancel or prevent marks from being registered that do not have a valid basis for registration. Prior to these procedures, the only recourse for trademark owners was to file a petition to cancel with the Trademark Trial and Appeal Board, which can be as time-consuming and expensive as filing a lawsuit in federal court. The new procedures are a welcomed development for trademark owners frustrated by a trademark registry that contains countless fraudulent or overbroad registrations that prevent legitimate marks from being registered.
The Act codifies an already-existing practice that allows any party to submit evidence relevant to one or more grounds for refusal of a registration. The Act provides that this evidence must be submitted during the examination phase. This procedure can be used to submit evidence showing a likelihood of confusion with an existing registration that the examining attorney may have missed or any other reason the registration should not issue, such as descriptiveness. The Act requires the Director to determine within two months of submission whether or not the evidence should be included in the record.
Two new procedures, known as “Ex Parte Expungement” and “Ex Parte Reconsideration,” will allow any party to petition to cancel a registration because the mark has never been used in commerce or the mark was not in use in commerce on or before the relevant date (the filing date of the application or the statement of use, whichever is applicable). These procedures are designed to cancel registrations that should not have been granted because the registrant never made valid use of the mark. During the normal examination process, the trademark examiner scrutinizes specimens to determine if the specimens show valid use of the mark in commerce. Examiners cannot ferret out all fraudulent claims of use. The new procedures empower others to patrol the trademark registry for registrations that should not have been granted and bring those registrations to the attention of the USPTO.
The new procedures should be especially useful in situations where the applicant includes a “laundry list” of numerous goods and services in the identification. Generally, all that is needed to obtain a registration for all goods or services in a class is to submit a valid specimen for one item or service per class. Once that specimen is accepted, the registration issues for all goods or services in that class, even though the mark may not be in use on or in connection with all goods or services. In recent years, this has frustrated trademark owners because those with valid trademarks are unable to register them for their relevant goods or services because other registrations were issued for overbroad identifications. The new procedures will allow parties to pare down the trademark registry to remove goods or services from registrations that were never used or not used on or prior to the relevant date.
Trademark owners, applicants, and practitioners should take care to keep good records of when use of a trademark began with each good or service included in the identification. If a registration is challenged using the new procedures, the registrant must put forth evidence showing that the mark was in use at least as early as the filing date of the application or statement of use. It is best if all trademark use can be supported by dated, documentary evidence from several different sources.
The USPTO is expected to issue regulations or other guidance giving details about how each of these procedures will function and the types of evidence needed to assert and rebut prima facie cases. We will be monitoring these developments. Please contact us if you would like our assistance with registering your mark or using one of the new procedures.
This article is provided for general information and should not be relied upon as legal advice for a specific situation. If you are in need of specific advice or legal representation, please do not hesitate to contact us.
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