New USPTO Rules Coming by End of 2021 – Including Challenging Registrations for Non-Use

Thursday, January 14, 2021

The US Congress passed the Trademark Modernization Act of 2020 on December 21, 2020 (H.R. 6196), which sets forth new trademark rules that will take effect on December 21, 2021. The details of how these new rules will be implemented is yet to be decided by the USPTO Director, but we will learn more as the year progresses. 

WHAT TO LOOK FOR:

  • Shortened response deadlines for Office Actions
  • Letters of protest rules are refined and made public
  • Procedures to challenge a registration based on non-use; different from petition to cancel or claim of abandonment
  • Rebuttable presumption of irreparable harm for trademark owner

MORE PRELIMINARY DETAILS:

  • Response deadlines for Office Actions
    • Currently: Applicants have six months to respond to an Office Action, and deadlines are not extendible
    • Coming: Office Action response deadlines will be between 60 days and six months, and extensions of time will be possible for a fee, but total time to respond will still not be longer than six months total
  • Letters of Protest rules are not new, but refined
    • During the examination of an application, a third-party can submit (for a fee) evidence of a relevant ground for refusal of a registration to the USPTO Director
    • The Director will decide within two months whether the evidence should be included in the record
    • The Director's decision is final and non-reviewable
    • The Director's decision will not prejudice any party's right to raise any issue or rely on any evidence in any other proceeding
  • Procedures to Challenge a Registration Based on Non-Use

The USPTO is making efforts to correct and protect the integrity of the Trademark Registry.  The USPTO wants to ensure that registered marks are in use in US commerce in connection with the registered goods and services or have them removed (in whole or in part).  Partly, the USPTO is tackling this by having stricter rules on specimens of use, including an audit system.  Now, the USPTO is creating a means to challenge registrations based on non-use. Currently, a registration can be challenged on certain grounds via a petition to cancel at the US Trademark Trial and Appeal Board.  Grounds for cancellation include abandonment of a mark, which requires three years of non-use AND an intent to abandon, however, simple non-use is not a basis. By the end of the year, third-parties can file ex parte proceedings to reexamine or expunge registrations based on non-use.  The crux of the proceedings are as follows, and the Director will set forth more specifics by year-end.   

  • Ex Parte Expungement of a Registration Based on Non-Use
    • Any person, including the Director, may file a petition to expunge a registration based on non-use for some or all of the goods or services
    • Intended for US registrations based on foreign registrations and designated under International Registrations
    • Can be filed once a registration is 3 years old and before it is 10 years old (but for the next three years, a petition for expungement may be filed at any time after a registration is three years old)
    • A registrant can submit evidence of use and, for marks registered under Sec. 44(e) or 66(a), special circumstances that excuse non-use
  • Ex Parte Reexamination of a Registration Based on Non-Use
    • Any person, including the Director, may file a petition to reexamine a registration based on non-use for some or all of the goods or services (whether on the Principal or Supplemental Register)
    • Intended for US registrations based on use-in-commerce under Section 1(a)
    • Can be filed between the date of registration and until a registration becomes five years old
  • For Both a Reexamination and an Expungement Proceeding
    • The Petitioner must conduct a reasonable investigation as to non-use and provide a verified statement and evidence of such in a petition
    • The Director can cancel a registration in whole or in part after the time for an appeal has expired or any appeal proceeding has terminated
    • No co-pending cases allowed – if a case is pending, no more cases can be instituted with respect to the same challenged goods or services
    • If the proceeding is unsuccessful, no further proceedings may be initiated as to those goods or services by anyone
  • Rebuttable presumption of irreparable harm for trademark owner
    • If a trademark owner is successful in an infringement action, the mark owner is entitled to a presumption that the court would award an injunction or temporary restraining order against the competitor's continuing use of a confusingly similar trademark. The intent is to protect consumers from being misled about the source of a good or service.

These new and modified trademark rules will no doubt warrant some revised strategies for consideration, including in relation to filing, maintaining, challenging, and watching. We will continue to monitor the developments and are prepared to discuss these with you.