Since 2019, the United States Patent and Trademark Office (USPTO) requires the intervention of a local attorney in the handling of trademark cases and the provision of an e-mail address for the owner, as a requirement for the filing of trademarks at the Office. Moreover, the Office reserves the right to randomly ask for additional proof of use of registered trademarks.

The next step along these lines was on 27 December 2021, when the “Trademark Modernization Act (TMA)”, passed a year ago, came into effect. This will arguably be one of the most important milestones in US trademark practice in recent years.

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The TMA amends the Trademark Act in two main respects, introducing new procedures that simplify the cancellation of trademarks subject to insufficient use and changing certain aspects of existing procedures.

With regard to the newly created procedures, we shall focus on the two main proceedings, as they could have a considerable impact on the current situation at the Office, given that they are intended, in the words of US colleagues, to “clean up the register”: “Ex Parte Expungement and Re Examination Proceedings”.

The purpose of both proceedings is to contribute to the proper functioning of the Office, “make room” for the registration of trademarks of parties who legitimately use their trademarks and block access to the register for trademarks that are not used or are subject to insufficient use.

Both proceedings constitute a quicker, easier and cheaper alternative to the existing procedure (extremely onerous in the US) for cancellation of trademarks. In a jurisdiction with a long-established tradition and culture of defending trademarks, we could therefore see a new dynamic in trademark protection strategies.

  • By means of the Expungement proceeding, any party (even the Office itself) may request a ruling on the non-use of a mark in commerce. In this proceeding a ruling is sought on the complete absence of use in commerce with respect to a registered trademark, for all or part of the goods and/or services covered. A successful petition in Expungement proceedings would entail that the mark has never been used in connection with all or part of the goods or services. Such a petition may be filed with respect to a mark between 3 and 10 years following the date of registration. However, up to 27 December 2023, it is possible to do so for any mark that has been registered for 3 years or more. This exceptional grace period could be interpreted as a kind of incentive to cancel marks or to encourage registrants to adapt their registrations in keeping with their actual use.
  • Under the new Re Examination proceeding, a third party (also the Office itself) may request cancellation of some or all of the goods and/or services of a mark on the basis that the mark was not in use on the filing date of the application or before the deadline for filing the statement of use, where applicable.

It is important to remember that the US trademark system is based on the “First to use” principle and that, depending on the filing basis claimed in the trademark application, proof of use will be required before or after filing. Therefore, the relevant time period for this purpose will depend on the use claim made in each particular case.

There can be no doubt that trademark protection in the US will call for a greater effort from owners when formulating their plans for protection, a truthful and realistic view of the intended use of their marks, very precise specifications of goods and services, and solid and sufficient proof of use.

Thus, from 27 December 2021, trademark owners will not only have to face the test of sworn statements of use, but there will also be a risk of cancellation of marks at the request of third parties or the Office itself.

The TMA also introduces changes with respect to existing proceedings:

In proceedings for cancellation of trademarks before the Trademark Trial and Appeal Board (TTAB), cancellation may be requested on the new ground that a registered trademark has never been used in commerce. This ground for cancellation will be available at any time after the first three years from the date of registration.

While it will not be implemented until 1 December 2022, with regard to office actions issued by the Office, the shortening of response periods for office actions introduced by the TMA is particularly relevant. The period for responding to an office action will be three months rather than the more generous 6-month period currently available.

Finally, we would also highlight the introduction of a two-month term for third parties to file a “Letter of Protest” (observations or request for evidence) in relation to a ground for refusing registration of a mark, in examination proceedings.

These are undoubtedly important changes aimed at helping to clear invalid trademark registrations from the register and ensure the smooth functioning of the US market and which, in some cases, will affect the strategies designed by owners for the defence and protection of trademarks and also for their maintenance, in a key jurisdiction for the portfolios of trademark owners all over the world.

Author: Cristina Arroyo

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