• Most of the new rules take effect December 14 or December 27, 2021
  • Implements new simplified and expedited procedures for challenging improper claims of “use in commerce” in newly issued and older trademark registrations
    • Allows for challenges to be filed anonymously via a US law firm (although the USPTO Director may require identification of the real party in interest in the case of abusive filings);
    • Creates a new “Expungement” Proceeding allowing for the expedited challenge of a registered mark that has never been used in commerce in connection with some or all of the listed goods/services. Expungement Petitions can be filed between the 3rd and 10th year after issuance of the registration and, until December 27, 2023, the 10-year-limit won’t apply (allowing for challenges to older registrations);
    • Creates a new “Re-examination” Proceeding by which challengers can file a Petition requesting re-examination of a registration on grounds that the mark was not in use on some or all of the listed goods/services on or before either (a) the filing date of a use-based application or (b) the date an Amendment to Allege Use was filed. A Re-examination Petition can be filed during the first 5 years of a registration.
    • Both Expungement and Re-examination Petitions must be filed with (1) a $400 fee; (2) a Verified Statement setting forth the elements of a reasonable investigation the challenger conducted to makes its determination of non-use (an Internet search alone is unlikely to be sufficient); and (3) whatever additional evidence is available to support the challenge;
    • If a prima facie case of non-use is established, the Director will institute the Proceeding without requiring any further involvement of the Petitioner;
    • The Director can also commence proceedings at its own initiative;
    • Once the proceeding is instituted, a trademark owner will have 3 months (with a 1 month extension available upon payment of a fee) to file a Response either (1) with evidence demonstrating use or (2) voluntarily deleting the challenged goods/services. Absent a timely Response and the filing of acceptable evidence of use, the challenged goods/services and/or registration as a whole will be cancelled. 
    • Appeals can be filed with the TTAB or the Director within 3 months of the cancellation decision.
  • Starting December 1, 2022, Office Actions issued during examination and post-registration will have a shorter response time of 3 months (rather than 6 months). A 3-month extension will be available for payment of a fee.  This new timeline will not apply to Madrid Applications.
  • Because the TLA can be weaponized, trademark owners should implement new procedures to capture and save specimens of use for all recent applications and registrations;
  • Trademark applications should be narrowly tailored to cover only those goods/services as to which there is actual use or a bona fide intent to use.

To learn more about the issues raised by this client bulletin, please contact the members of Potomac Law's Trademark Practice Group. Our trademark team assists clients with a full range of trademark services, including trademark searching and selection; preparing, filing, and prosecuting trademark applications; and maintaining trademark registrations. 

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