USPTO Proposes Streamlined Procedures to Remove Defunct Marks from Trademark Register

  • Aug 24 2017
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  • Category: Blog

What is a trademark cancellation proceeding?

The United States Patent and Trademark Office (USPTO) recently proposed streamlining the procedures to eliminate registrations for marks that are not in use. According to a notice published in the Federal Register, the USPTO intends to create an expedited cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).

Currently, cancellation of a registration for non-use requires a showing of either:

  • Abandonment of some or all of the goods/services, and intention not to resume use, or
  • Non-use for some or all of the goods/services in a registration prior to the filing date, date of amendment to allege use, or date of statement of use

In short, the streamlined proceeding would be limited to asserting one or both of these claims. In order to have grounds for a claim, the petitioner would be required to provide proof of both standing and abandonment and/or non-use. The proof could be in the form of a declaration outlining a trademark search and the results of that search, or other evidence of abandonment or non-use. The respondent would be required to answer within 40 days, providing proof of use or other evidence to counter the abandonment or non-use claims, among other defenses.

Nonetheless, the new procedures are designed to limit discovery, shorten the timetable and eliminate hearings before the TTAB. Under the streamlined process, moreover, pleadings, presentation of evidence, and limited briefing would occur simultaneously. Finally, the TTAB would issue a decision within an expedited timeframe.

The Takeaway

The streamlined proceedings are designed to be quicker and more efficient. In the event of a default judgment in which the respondent does not file an answer, the proceeding could be concluded in about 70 days. If the respondent does answer, the entire proceeding could take about 170 days. Finally, the proposed changes would make the process more cost effective. The fee for a petition to cancel a trademark would be lower than existing proceedings (i.e., inter partes abandonment and non-use grounds for cancellation).

The USPTO accepted comments on the proposal through August 14, 2017. At this juncture it remains to be seen if/when the proposed streamlined cancellation proceedings will be implemented. In the meantime, if you need assistance with an opposition or cancellation proceeding under the existing scheme before the TTAB, you are well advised to seek the advice and counsel of experienced intellectual property attorneys.