Reexamination in the Trademark Modernization Act
Parallel to ex parte expungement, the Trademark Modernization Act of 2020 (TMA) introduced ex parte re-examination as a another tool for clearing out federal trademark registrations which are not being used in U.S. commerce. Re-examination proceedings target registrations where the good/service was not in use in commerce on or before the date claimed on the registration. The Lanham Act allows a party who has a “bona fide intention” to use a trademark in commerce to file an application, requiring them to submit a statement of use within 6 months.1
Despite the periodic filing requirements for 1(b) registrations to prove use in commerce, prior to the TMA, the USPTO had limited mechanisms to combat registrations containing inaccurate and/or fraudulent dates of use in commerce. Ex parte re-examination proceedings allow independent actors, including the USPTO Director, to cancel marks not being used in commerce and in turn decrease total pendency of applications and fraudulent registrations. In combination with expungement, these ex parte proceedings are intended to clear a path for potential rightsholders and effectively enforce the actual use of goods and services in commerce.
What Constitutes Basis of Reexamination
A party, in addition to director-led proceedings, can file a petition for an ex parte proceeding to cancel a mark on the basis of Re-examination “…if the mark is registered under section 1 of the Act and was not in use in commerce on or in connection with some or all of the goods and/or services recited in the registration on or before the relevant date.”2 For applications filed under 1(a), the relevant date is the date of registration.3 For those filed with the intent to use under 1(b), the relevant date is the latter of either the date of Allegation of Use or the deadline for the required Statement of Use.4
A petition for re-examination must be filed within 5 years and may only be used against Section 1 registrations. Parallel to petitions for expungement, the petitioner must pay a filing fee, identify each good and/or service listed in the registration targeted for the non-use on or before the relevant date, provide a statement detailing a “reasonable investigation” of nonuse of the mark in U.S. commerce, and provide prima facie evidence of non-use, supporting the statement.5 Critical to the “reasonable investigation” is any temporal evidence supporting that the goods and/or services in question were not in us on or before the relevant date.6 If any element missing from the petition, the USPTO will notify the petitioner to correct the omission within 30 days.
Upon determining non-use based on the petition, the USPTO will provide notice to both the petitioner and the registrant through an official Office Action. Subsequently, the registrant has three months to either file a Section 7 request to delete goods/services at issue from the registration or submit a verified statement of fact, and documentary evidence or specimens of use to “demonstrate use of the registered mark in commerce on or in connection with the goods and/or services at issue on or before the relevant date established under 37 C.F.R. §2.91(a)(2).”7 If the registrant fails to respond or fails to establish use of the mark by the relevant date, the USPTO will issue a final decision to cancel the registration for each good/service in question.
The New Aspects of Trademark Registration
The new ex parte re-examination proceedings under the TMA have created new aspects of trademark registration and protection for rightsholders to consider. For businesses or individuals that are unable to prove complete non-use of “dead wood” or inaccurate registrations, future rightsholders may consider re-examination proceedings as an alternative to expungement or inter partes cancellation proceedings.8 Furthermore, estoppel doesn’t apply to re-examination procedures when used subsequently to an expungement proceeding that confirms some use of the mark in commerce, therefore allowing it to be used in succession to expungement proceedings.
When filing, petitioners must take care to submit thorough documentation that includes all timestamps and URLs and may consider using tools such as the Internet wayback machine to capture temporal website data. Finally, to ensure avoidance of being targeted by a re-examination proceeding, both foreign and domestic brand owners must ensure their Intent to Use registrations under 1(b) of the Lanham Act are timely supplemented by accurate and detailed Statements of Use in commerce, supported by documentary evidence and specimens.
Talk to An Experienced Trademark Attorney Today
If the TMA has left you with more questions than answers, an experienced trademark attorney is a crucial resource for you and your business.
At AU LLC we have years of experience helping both local and international businesses navigate trademark law. Call us today at 312-900-9426 to schedule a meeting to talk about what your options are and what strategies would best fit your situation. We can also be reached by sending us an email.
- 15 U.S.C. § 1051(b)
- 37 C.F.R. § 2.91 (a)(2) (emphasis added)
- 37 C.F.R. § 2.91 (a)(2)(i)
- 37 C.F.R. § 2.91 (a)(2)(ii)
- TMEP § 1716.02(b)
- TMEP § 1716.02(c)(ii)
- TMEP § 1716.04(c)
- TMEP § 1716.04(g)