In an effort to maintain a more accurate registry of active trademark registrations, the USPTO is proposing a new streamlined cancellation proceeding. The proposed proceedings are intended to provide a more efficient and cost-effective procedure for removing marks not in use from the registry as opposed to full blown cancellation proceedings that can take a substantial investment in time (often years) and money.
The accelerated cancellation process would only have two available grounds for cancellation: (1) abandonment as to some or all of the goods/services, and (2) nonuse as to some or all of the goods/services for a section 1(a) use-based registration at the time of the relevant filing, i.e., the date of filing, amendment to allege use or statement of use. In addition, the proposed process would require that evidence be submitted with the pleadings and would only allow, upon motion, limited discovery solely for the issue of standing. Moreover, the proceedings would have no oral hearings and would not allow respondents to assert counterclaims.
To initiate, a petitioner would be required to set forth facts establishing its standing and set forth with particularity the factual basis for the ground or grounds asserted as the basis for the cancellation. As noted above, the petitioner would need to provide evidence supporting both its standing and ground for cancellation. For example, a petitioner could provide a declaration detailing a search for use of the mark and the results of such search, as well as other evidence of abandonment or nonuse. The fee for the petition likely would be $300 per class when filing electronically and $400 per class when filing by paper.
A respondent would have 40 days to answer the petition. In addition to admitting or denying allegations in the petition and stating any applicable defenses, such as estoppel or prior judgments, a respondent would need to provide evidence of use and evidence to support any pleaded defenses. After reviewing the answer and submitted evidence, a petitioner would have 40 days to either (1) reply and provide any rebuttal evidence, (2) withdraw the petition without prejudice to its right to file another cancellation proceeding on grounds other than the grounds raised in the initial petition, or (3) convert the streamlined proceeding into a full cancellation proceeding with the appropriate fee and any proposed amendment to the petition to cancel.
While a respondent would not have the ability to convert the streamlined proceeding into a full cancellation proceeding, both parties would retain the right to seek judicial review of the TTAB decision in a streamlined proceeding.
The expedited procedure should allow for quicker resolutions. In a case where a respondent does not respond to the petition, the entire proceeding could conclude within approximately 70 days. In a case where a respondent does respond, the entire proceeding could conclude within approximately 170 days. Each party would only have one extension of time to file the answer or reply.
The proposed streamlined proceeding would be akin to expungement proceedings in Canada, which allows interested third parties to challenge a mark that has been registered for at least three years on nonuse grounds. Like the USPTO’s proposed proceeding, a respondent in an expungement proceeding must provide evidence of use of the mark with all of the goods/services identified in the registration at any time during the three-year period immediately preceding the notice of expungement. If no evidence is submitted, the registration is expunged. If evidence is lacking only in respect to certain goods/services, then the registration is maintained but amended to delete those goods/services that lack evidence of use. Various other countries have similar processes as well.
The USPTO is seeking comment on the proposed streamlined proceeding by August 14, 2017. Click here to read the Federal Register Notice.
This article was written by Matthew Clark, SmithAmundsen LLC. If you would like to write or submit content for the Intellectual Property Section please contact Kim Ferguson at firstname.lastname@example.org.