MarkIt to Market® – December 2021: Completely modern! Trademark Modernization Act Provides New Tools for Trademark Owners | Sterne, Kessler, Goldstein & Fox PLLC

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Brand owners and practitioners have additional reasons to celebrate this year, as the majority of the Trademark Modernization Act entered into force on December 18, 2021. Among other benefits for trademark infringement actions and review Federal Trademark Office, the TMA has also created two valuable new mechanisms. – ex parte expungement and review procedures – to erase unused (and even fraudulent) trademark registrations from the Federal Trademark Register.

The USPTO will begin accepting expungement or reconsideration motions from December 27, 2021 – so which may be the right path for your enforcement strategy?

Cancellation requests are appropriate when you believe that a registered trademark has never been used in commerce with some or all of the products / services covered by a federal registration. During the following two years (i.e. until December 27, 2023), a motion to strike may be filed against any registration that is at least three years old; after this date, proceedings are only opened against registrations between three and ten years old.

Requests for reconsideration are against registrations for which the mark was not used on the filing date of the application (for a use-based application) or on the filing date of the change in alleged use / date expiration of the declaration of use (for a request for intention to use). A request for review can only be filed within the first five years after registration.

These two application tools are available to any person or company, and can be requested anonymously, unless otherwise specified by the director. As with federal trademark applications, potential applicants domiciled outside the United States must file such applications through a lawyer licensed in the United States.

These requests can be filed online through the USPTO’s Electronic Trademark Application System (TEAS) and must include all of the following requirements:

  1. A verified statement that the applicant has conducted a “reasonable investigation” to determine whether the mark has been used in trade with the applicable goods / services, including a concise factual statement detailing the basis for the request;
  2. Evidence to support a prima facie case of non-commercial use (“a reasonable predicate”); and
  3. $ 400 fee by class of disputed goods / services.

The USPTO will email the owner or their attorney a copy of the request (if an email address is on file), and all correspondence related to the request will be visible in the Trademark Status System. and document search (TSDR).

Once the USPTO initiates expungement or reconsideration proceedings, a reviewing attorney will issue an Office action requiring a response – within three months – with proof of excusable use and / or non-use ( for delisting proceedings involving registrations with the underlying §44 (e) or §66 (a) requests). The filer can also request an extension of one month to respond with the payment of $ 125.

If the registrant does not respond, the USPTO will terminate the process and revoke the registration in whole or in part, as requested – but if the registrant responds, the USPTO will consider evidence of potential use / non-use and will make a decision.

It should be noted that, as part of his efforts to clear the Federal Register of Unused Marks, the Director of the USPTO may also request and initiate expungement and review proceedings on his own initiative if a prima facie case of no -use is established.

Here are some important considerations to keep in mind for these new tools:

  • Hire a trademark lawyerNote: For potential applicants who wish to request expungement or reconsideration, and for registrants seeking to defend themselves against such a proceeding, it is important to consider hiring a lawyer / trademark law firm to : (1) investigate potential allegations of non-use and build evidence files; and (2) protect the identity of the requester (unless the USPTO specifically requires it), avoiding negative publicity and potential reprisals.
  • Perform authorization research before submitting an applicationNote: This is always advised, and since these new deletion and review tools could remove the blocking registration (s), an authorization search may alert trademark owners to an identical / similar trademark that has been registered without being used in the trade.
  • Brand owners in the cannabis and CBD industries have new opportunities to clear their brand registers in the future: For trademark owners who have been unable to register their trademarks due to the federal legal framework regarding cannabis products and consumables made with CBD ingredients, a reconsideration procedure could be useful to remove recently registered trademarks. for products / services registered on the basis of a fraudulent declaration or are for goods which cannot be legally used in trade.
  • Brand owners must archive their use of their brands: In addition to being prepared to take enforcement action if warranted, brand owners must now (more than ever) be prepared to to respond to such a procedure, if it is initiated against your registration. As always, we recommend that trademark owners ensure that they maintain: (1) examples of trademark use on all the relevant goods / services covered by your records, including various relevant photographs, brochures and documents showing the use of the same goods / services; (2) documentation, photographs and screenshots of updated uses, for example, an updated website; and (3) information regarding the discontinuation of use of trademarks on particular products / services – this is particularly critical when filing a statement of continued use alone or with a renewal request.


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