New Tools Arrive for Removing Roadblocks to Federal Trademark Registration
| Publication year | 2022 |
| Pages | 38 |
New Tools Arrive for Removing Roadblocks to Federal Trademark Registration
By Michael Cicero
Introduction
When applying for federal registrations for their trademarks or service marks, applicants frequently encounter roadblocks that take the form of prior federal registrations owned by others. Recently, the U.S. Patent and Trademark Office ("USPTO") created two ex parte proceedings, called expungement and reexamination, to help remove those roadblocks when the prior registrations may be partially or wholly invalid. The new proceedings are intended to provide streamlined alternatives to existing inter partes proceedings for challenging others' registrations.
One can best understand these two new proceedings against a backdrop of trademark fundamentals, discussed briefly below.
A trademark "includes any word, name, symbol, or device, or any combination thereof" which a person uses, or has a bona fide intent to use, "to identify and distinguish his or her goods . . . from those manufactured or sold by others and to indicate the source of the goods, even if that source is unknown." Similarly, a service mark includes the same types of indicia for identifying and distinguishing one's services.[1] The term "mark" encompasses both trademarks and service marks. Examples of different indicia that can function as a mark include MERCEDES-BENZ (a word mark) and the separate well-known symbol comprising a circle containing a "three-point star."[2]
If use of one's mark is (or is intended to be) "in commerce," namely, activity that can be lawfully regulated by the Commerce Clause, then the mark owner can pursue one or more federal registrations for the mark.[3] Generally, a federal registration provides several benefits that simplify efforts to enforce the mark against would-be infringers; for example, a federal registration serves as prima facie evidence of ownership and validity of the registered mark.[4] Without such prima facie evidence of validity, a mark owner is relegated to common law rights and thus bears the added litigation burden of having to, among other things, affirmatively establish that the mark either is "inherently distinctive" or has acquired "secondary meaning," both determinations demanding highly fact-intensive inquiries.[5]
All goods or services described in a federal trademark registration must be those for which the trademark or service mark is actually in use in commerce,[6] or else the registration is "void ab initio."[7] To meet the use requirement, an applicant files a sworn statement attesting to actual use in commerce of the trademark in connection with the recited goods and/or services, accompanied by one or more specimens demonstrating such use.[8]
Filing a federal trademark application with the USPTO does not guarantee issuance of a registration. USPTO examiners commonly refuse registration on the purported ground that the mark sought to be registered is "likely to cause confusion" with a mark of a prior federal registration, i.e., a registration owned by another that issued from an application bearing an earlier filing date than that of the application being examined. In the USPTO, examiners recognize a multi-factor test in deciding whether to make a likelihood-of-confusion refusal, but they frequently focus on only two of those factors: (1) the similarity between the respective marks; and (2) the relatedness between the respective goods/services covered by the marks.[9]
Now imagine that your client, a small business, files an application to federally register a mark that it has affixed to its products for the last couple of years, but that it later receives a likelihood-of-confusion refusal on the basis of another's prior registration. Upon investigation, however, the client learns that the registered mark is not currently in use for all of the products or services listed in the cited registration. This raises the issue of whether the cited registration may be invalid for violating the "use in commerce" requirement described above. What can your client then do to try to remove this potentially invalid roadblock to registration?
Until recently, the client's only recourse comprised either bringing an inter partes cancellation proceeding in the Trademark Trial and Appeal Board ("TTAB"),[10] or filing an action in federal district court to cancel the prior registration.[11] High expenses associated with bringing a federal district court action are well-known, and cancellation proceedings also prove expensive and time-consuming, because they resemble federal district court litigation, including requiring discovery. The high expense of both these conventional proceedings often deters small- and medium-sized business from initiating inter partes cancellation proceedings.[12]
On November 17, 2021, the USPTO issued regulations to implement portions of the Trademark Modernization Act of 2020 ("TMA").[13] The regulations of interest here, which took effect on December 18, 2021, create the ex parte expungement and reexamination proceedings. "These new proceedings are intended to provide a more efficient and less expensive alternative to a contested inter partes cancellation before the TTAB."[14]
The fraudulent registration problem
The USPTO created the new trademark proceedings to address an unprecedented spike in fraudulent trademark applications. As of September 2018, applications from China had increased more than 1,100% over the preceding six years, "far outpacing growth from any other country."[15]' A significant number of applications originating from China had specimens of dubious legitimacy, raising questions of whether the applied-for marks were actually in use as alleged.[16]The USPTO observed: "When the register includes marks that are not currently in use, it is more difficult for legitimate businesses to clear and register their own marks," and that "this "˜cluttering' has real-world consequences when the availability of marks is depleted."[17]
New procedural options: Expungement and reexamination proceedings
Expungement and reexamination proceedings bear close relation to one another. They both seek ex parte cancellation of some, or all of the goods/services of a federal trademark registration based on lack of use in commerce.[18] "[T] he procedures for instituting the proceedings, the nature of the evidence required, and the process for evaluating evidence and corresponding with the registrant . . . are essentially the same."[19] Yet some differences exist between these proceedings, as summarized below.
• Expungement
o Types of Federal Registrations Targeted: Any type of U.S. trademark registration, namely, U.S. registrations that issued from either: (i) "use"-based applications, (ii) "intent-to-use" applications,[20] or (iii) applications relying on foreign trademark activity for a use basis, i.e., an originating use, or application filed, in one or more foreign countries.[21]
o Extent of Non-Use Addressed: Mark has never been used in commerce.[22]
o Time for Filing Petition:
• Through December 27, 2023: Any time after three years from the date of registration.
• After December 27, 2023: Before the expiration of 10 years from the date of registration.[23]
• Reexamination
o Types of Federal Registrations Targeted : Only "use"-based applications or "intent-to-use" applications.[24]
o Extent of Non-Use Addressed: Mark was not in use in connection with some or all of the goods/services as of the " relevant date."
• Registrations issuing from "use"-based applications: The "relevant date" is the filing date of the application.[25]
• Registrations issuing from "intent-to-use" applications: The "relevant date" is the later of: (i) the filing date of any amendment to convert the basis of the application from "intent-to-use" to "use"; and (ii) the expiration of the deadline for filing, after receiving a notice of allowance, a verified statement attesting to actual use in commerce, including all approved extensions thereof.[26]
o Time for Filing Petition: Before the expiration of five years from the date of registration.[27]
Who Can Institute Expungement and Reexamination Proceedings?
"Any person may file a petition requesting institution of an ex parte proceeding to cancel a registration of a mark, in whole or in part . . . ."[] In addition, the USPTO director may institute such proceedings on his/her own initiative.[29]
The petitioner need not be the trademark applicant who received the refusal to register, nor need the petition identify such a party unless the Director requires it in a particular case.[30] "[R]equiring such information," said the USPTO, "could discourage legitimate petitions from being filed where the potential filers have concerns [such as retaliation] about being identified in the petitions." Yet the Director retains discretion to require that information "in order to discourage and prevent abusive filings."[31]
The petitioner can even be an attorney. Any petition filed by an attorney must provide the attorney's bar information as well as his/her contact information. Foreign attorneys must additionally: (i) possess a grant from the USPTO of an application for reciprocal recognition, and (ii) appoint a qualified U.S. attorney as the representative who will correspond with the USPTO regarding the proceeding.[32]
Required elements of expungement and reexamination petitions
One of the new regulations lists the following required petition elements. Once a petition is complete, it cannot be amended.[33]
1. Payment of the petition filing fee, currently $400 per class of goods and/or services sought to be stricken from the challenged registration.[34]
2. Registration number of the targeted registration.
3...
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