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USPTO files proposed rules for new US trademark act

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A newly released document outlines how the Trademark Modernization Act could affect trademark registrants

The USPTO filed its proposed rules for implementing provisions of the Trademark Modernization Act yesterday, May 17.

The document set forth guidelines for how the USPTO would oversee the new ex-parte expungement and ex-parte re-examination proceedings, which are designed to make it easier for third parties to cancel marks that are no longer in use.

The USPTO is seeking public comment on the proposed guidelines before they are put into effect. When they are final, they will give practitioners more information on how to prepare for these proceedings.

The Trademark Modernization Act, which was passed in December 2020 and will go into effect in December 2021, was enacted to help clear the registry of marks not being used in commerce.

The USPTO document explained what petitioners would have to do before requesting ex-parte expungement and ex-parte re-examination proceedings.

It said, for example, that petitioners would have to partake in a reasonable investigation before alleging that a mark was never used in commerce or not used in commerce as of the relevant date.

“What constitutes a reasonable investigation is a case-by-case determination, but any investigation should focus on the mark disclosed in the registration and the identified goods and/or services, keeping in mind their scope and applicable trade channels,” the document said.

The USPTO said that it would generally not consider a single query on an internet search engine to be a reasonable investigation. But the applicant would not have to demonstrate that it searched all potentially available sources of evidence.

Another proposed rule set a fee of $600, per class, for a petition for expungement or re-examination.

And one proposed guideline said that the USPTO director would only consider complete petitions for expungement and re-examination.

The document outlined several factors that applicants would have to include for the petition to be considered complete, including the fee, name, domicile address, and email address of the petitioner, and a concise factual statement of the relevant basis for the petition.

The document also outlined requirements for what trademark registrants would need to do if the new proceedings were instituted against their marks.

One proposed rule said that a registrant could respond to a proceeding by deleting some or all of the goods or services. But if a registrant failed to respond within a timely fashion, the USPTO would cancel the registration – either in part or in whole.

A registrant could request the reinstatement of its registration, however, if it failed to respond because of an extraordinary situation.

According to the document, the USPTO is looking into whether it should consider a trademark owner’s registration for audit when the registrant’s failure to respond leads to some goods or services being cancelled.  

As part of the Trademark Modernization Act, a party can file an ex-parte expungement proceeding within three to 10 years of a mark’s issuance on the basis that it was never used in US commerce.

It can initiate an ex-parte re-examination proceeding within the first five years of the mark’s issuance when the mark was not used in US commerce before its date of registration.

Managing IP will follow up with more analysis of the proposed rules.

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