Using the Trademark Modernization Act to expunge registrations
Updated: Feb 17
It's almost here! The Trademark Modernization Act (TMA), passed in 2020, will become effective on December 18, 2021. The U.S. Patent and Trademark Office acknowledges that its register of trademarks is full of "blockbuster" registrations that seem to list every good and service under the kitchen sink, and others where a mark was never actually used in connection with the goods or services. Sometimes, a third party is more aware of the circumstances of use or non-use than the Examining Attorneys at the USPTO. Therefore, the TMA empowers these parties to recommend expungement or reexamination of these registrations and applications.
Trademark geeks like me get excited when any new tool allows for more efficiency, and that's just want the TMA promises. The TMA contains provisions to allow unrelated third parties to request expungement of registrations and reexamination of applications, which should result in a quicker and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). Interestingly, the USPTO has indicated that any person may file a petition to request institution of an expungement or reexamination proceeding.
You’re not required to identify the name of the real party in interest on whose behalf the petition is filed, but the USPTO may require that information in particular cases. For example, while an attorney can file the request in their name instead of their client’s name, the Director may require the attorney to provide the client’s identity. So, the TMA may be a way for parties to initially semi-anonymously file these proceedings through an attorney. Foreign parties must obtain U.S. counsel in order to file a petition.
Here are more details about the new things parties will be able to do under the TMA:
Any party may request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.
Time limit. This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.
Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.
When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.
When the underlying application was filed with an intent-to-use basis, the relevant date is the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.
Time limit. This new procedure must be requested within the first five years after registration.
I can hardly wait for the TMA to become effective. At least several of my clients' applications have been blocked by inappropriate registrations or applications, and we plan to follow these procedures to get them cleared away.