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December 16, 2021
They say that diamonds are forever. Trademarks can be too—but only if you keep using your goods or services in commerce. For example, Samson Rope Technology’s trademark logo (seen at https://samsonrope.com/ ) was registered with the United States Patent and Trademark Office on May 27, 1884, and the registration has been timely renewed since then. Samson Rope can keep this trademark until the end of time so long as it keeps using its logo in commerce in connection with the goods covered by its registration (and pays the appropriate fees to the Trademark Office).
But not all brands have such staying power. For example, Merchant Service was a popular brand of tobacco pipes, with the mark first used in commerce in 1938, and registered in 1968. However, the company went out of business and its trademark expired in 1992. When a mark has truly been abandoned, it is free for others to use. In fact, a new Merchant Service pipe company was formed, evoking the namesake pipes from the old, now defunct, original company. The new company then registered the same name, and it now has the rights to that trademark.
That is how trademarks are supposed to work. By requiring use in commerce for each good or service covered by a federal registration, marks that are no longer in use get freed up so that they do not interfere (either directly or by likelihood of confusion) with other entities who are involved in interstate commerce and who seek registration of their own trademarks.
Sometimes, trademarks wind up registered even though they do not cover any goods or services that are actually in use. This can happen in a number of ways. Proof of use in commerce is not required (at least initially) for trademarks based on a foreign trademark application or registration. This can lead to a trademark being registered that has never been used in commerce. Or, a trademark holder might falsely allege that it has used its mark in commerce — or the trademark holder might have used the mark in commerce, but only with respect to some of a laundry list of goods allegedly covered by the registration.
As a result, the federal trademark register has wound up cluttered with trademarks that are either not being used in the United States or that are too broad in scope. To date, the Trademark Office has an established proceeding for cancelling trademarks for non-use (trademarks can also be cancelled on other grounds), but this inter partes proceeding can be costly and lengthy. Furthermore, a petitioner must have standing to maintain such a proceeding.
The Trademark Modernization Act of 2020 (“TM Act of 2020”) created two new ex parte proceedings, expungement and reexamination, that should make it easier to remove non-used marks (in-whole or in-part) from the trademark register. These proceedings will both be available starting on December 18, 2021.
Expungement: This proceeding will allow a petitioner to request cancellation of some or all of the goods or services in a trademark registration if the trademark owner never used the mark in connection with those specific goods or services. Any person may request expungement of any trademark that has been registered for between three and ten years. (Until December 27, 2023, this proceeding can be used for any trademark that has been registered for at least three years.)
Reexamination: This proceeding will allow a petitioner to request cancellation of some or all of the goods or services in a trademark registration if the trademark was not used in commerce in connection with those specific goods or services as of the relevant date — which is (a) the date on which a use-based trademark application was filed, or (b) for an application that was originally filed on an intent-to-use basis, the later of the date an amendment to allege use was filed, or the date that was the deadline to file a statement of use. Any person may request reexamination for any trademark within the first five years of its registration.
Mechanics of Either Proceeding: Recently issued rules (available here) detail how these proceedings will work. Broadly speaking, a person that wants to initiate either proceeding can submit a petition to the USPTO Director with a statement and evidence regarding the alleged nonuse, and a $400 fee per class of goods or services subject to the proceeding.
As these are ex parte proceedings, after this point, there is nothing more for the petitioner to do. If either proceeding is instituted, the Trademark Office will issue an Office Action to the trademark owner. The Trademark Office will make its decision based on the trademark owner’s response to the Office Action. If the decision is adverse to the trademark owner, the owner can request reconsideration of the decision by the Trademark Office or appeal to the Trademark Trial and Appeal Board.
Only time will tell how frequently these procedures get used. But they at least provide a relatively low cost option for attacking a trademark registration based on nonuse.
Note: In the above, we focus on the reexamination and expungement procedures created by the TM Act of 2020. There are, however, several additional noteworthy features in this legislation. We wrote more broadly about the TM Act of 2020, as well as the Copyright Alternative in Small-Claims Enforcement Act of 2020, in our January 12, 2021 blog post.
Author: Benjamin Charkow
