Trademark Office Offers Blueprint for New Cancellation Processes

May 17, 2021, 10:25 PM

The U.S. Patent and Trademark Office is set to issue a proposal for implementing a new law aimed at weeding out fraudulent trademarks.

The proposed new procedures would provide a faster, more efficient, and cheaper path for having a mark never used in commerce canceled, the office said in a notice of proposed rulemaking scheduled to be published in Tuesday’s Federal Register. The filing fee for petitions would be $600 per challenged class of products covered by the trademark, under the proposal.

The proposal would move the agency forward on required implementation of the Trademark Modernization Act, which became law in December. It was designed to help clear the registry of fraudulent registrations blocking potential registrations of new marks.

Public comment on the proposal is due by July 17.

Many allegedly fraudulent registrations are said to originate from China. Applications from China surged in recent years due to monetary incentives from provincial governments.

The proposal outlines similar processes for two types of proceedings.

Petitions for expungement would have to allege the relevant trademark was never used in commerce or in connection with at least some of the products listed in the registration. A petition for reexamination would have to allege it wasn’t used on or before the relevant date, generally the application filing date.

An expungement proceeding can generally be initiated between three and 10 years after the trademark’s registration. For three years after the law was enacted—until December 2023—petitioners can challenge any mark at least 3 years old.

Petitioners would have to include a verified statement laying out their “reasonable investigation” into whether the mark was actually used in commerce that they conducted before challenging it. The office would decide whether to institute a case based on whether there appears to be a legitimate claim.

Respondents would be required to provide evidence of the trademark’s use, the agency said. The new law noted that in some cases specimens showing use may no longer be available and they’re not necessarily required. But rebutting the plausible allegation of nonuse requires corroborating evidence backing testimonials and other claims of use.

Failing to rebut a claim would result in an office action informing the owner that the trademark will be canceled. The trademark owner can request reconsideration or appeal to the Trademark Trial and Appeal Board.

The agency is also proposing language to implement the law’s codification of an already existing letter-of-protest procedure. That allows third parties to submit to examiners evidence bearing on registrability of a pending applied-for mark.

To contact the reporter on this story: Kyle Jahner in Washington at kjahner@bloomberglaw.com

To contact the editors responsible for this story: Renee Schoof at rschoof@bloombergindustry.com; Keith Perine at kperine@bloomberglaw.com

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