The USPTO has now implemented provisions of the Trademark Modernization Act of 2020 (86 Federal Regulation 64300, Nov. 17, 2021). Parties are now allowed to allege non-use as grounds for cancellation before the TTAB. The act reduces office action response time from six months to three months (except for applications under Section 66(a)), and allows applicants to request a single, three-month extension to respond upon submission of a separate fee. The new regulations grant statutory authority for letters of protest and address the issue of co-pending applications and estoppel. Most importantly, the act creates two new processes for expungement and re-examination of registrations. The Final Rule will come into effect on Dec. 18, 2021 and the office action provisions will come into effect on Dec. 1, 2022.

Expungement and re-examination

Through its new expungement mechanism, the USPTO determines whether a petitioner’s evidence supports a finding that a registrant has not used its mark at all in commerce, or in connection with all or some goods in its registration. A petitioner can request, or the director may institute, an ex parte expungement proceeding between three and 10 years following the date of registration.

Similarly, a petitioner may request, or the director may institute, a re-examination proceeding during the first five years following the date of registration. Here, the USPTO must determine whether the evidence supports a finding that the mark was not in use in commerce, or in connection with the stated goods and services as of the application filing date or before the deadline for filing a statement of use, where applicable. If the petitioner shows non-use and that determination stands upon review, the USPTO will cancel the registration in whole or in part.

While the act gives discretion to the director to establish a limit on the number of petitions for expungement or re-examination, the USPTO determined it will not impose a limitation at this time to discern the efficacy of the existing safeguards in the statute. And while relevant authority is set forth in separate portions of the act, the required evidence and procedures for instituting proceedings, evaluating evidence, and communicating with the registrant are “essentially the same”.

The USPTO will accept petitions requesting institution of proceedings for re-examination or expungement starting Dec. 27, 2021.

Section	Amended/Added
2.91	Added
2.92	Added
2.93	Added
2.94	Added
2.6	Amended
2.11	Amended
2.23	Amended
2.67	Amended
2.117	Amended
2.142	Amended
2.145	Amended
2.146	Amended
2.193	Amended

Requirements for petition and accompanying fee

Each petition requires a $400 fee per class and must include:

• Basis for petition;
• Registration number subject to the petition;
• Petitioner’s name, address, and email;
• Designation of an attorney qualified to practice if the petitioner is not in the United States, including the attorney’s name, address, email address, and bar information;
• Identification of each good or service covered by the registration in question;
• A statement signed by someone with first-hand knowledge of the required facts – specifically, paragraphs depicting the proven elements of a reasonable investigation and a concise statement for the relevant basis for the petition; and
• A copy of all documentary evidence supporting non-use of the mark in commerce with an itemized index (Federal Regulation at 64301—2).

Requirement for reasonable investigation

The petitioner must conduct a reasonable investigation to determine that the registrant has never used the mark (in cases for expungement), has not used the mark as of the relevant date (for re-examination purposes), or has not used the mark in connection with the stated goods and services in the registration.

A reasonable investigation is “an appropriately comprehensive search likely to reveal use of the mark in commerce on or in connection with the goods and services if such use was made”. This is a case-by-case determination. The petitioner’s investigation should show that a search for use in relevant channels of trade and advertising for goods or services did not reveal use in commerce and specifically describe the sources searched, how and when the petitioner conducted the searches, as well as the information received. A single search is unlikely to suffice, but a reasonable investigation will not require showing that the petitioner searched all of the potentially available sources of evidence.

The prima facie case and notice

A petition for re-examination or expungement further requires a prima facie showing of non-use. This mandates a reasonable basis for non-use be established, and that the petitioner must provide sufficient notice of the claimed non-use to the registrant for response and possible rebuttal. Whether the petitioner makes that showing depends on the evidence and information collected as a result of its investigation and as set forth in the petition, as well as the USPTO’s electronic record of the mark.

Additionally, the Final Rule provides that the USPTO itself will give notice to the affected parties when a petitioner requests a re-examination or expungement proceeding, and again when the director decides to institute a proceeding. It allows the director to determine this with a decision that is final and non-reviewable.

The act and the subsequent Final Rule are designed to provide a more efficient and less expensive system for clearing out fraudulent registrations within the trademark database. This in turn should promote more transparency and new opportunities for legitimate businesses looking to protect their brand.

A full explanation and overview of the regulations can be found here.

This article originally appeared in World Trademark Review Weekly on Dec. 2, 2021 and is reprinted with permission.