Since 2019, the U.S. Patent and Trademark Office (USPTO) has required the involvement of a local attorney in the handling of trademark applications and the provision of the owner’s email address as a prerequisite for filing trademarks with the Office. Furthermore, the Office has reserved the right to randomly request additional evidence of use of registered trademarks.
In this regard, the next step will take place on December 27, 2021, when the“Trademark Modernization Act (TMA),” enacted a year ago, takes effect. This will likely be one of the most significant milestones in recent years in U.S. trademark practice.
The TMA amends the Act in two main ways: it introduces new procedures that simplify the cancellation of trademarks that are not being used properly, and it modifies certain aspects of existing procedures.
With regard to the procedures created“ex novo,”in this article we will focus on the two most important ones, as they may alter the Office’s current landscape by seeking, in the words of our American colleagues, a “cleaning up of the register”: “Ex Parte Expungement and Reexamination Proceedings.”
The purpose of both is to ensure the proper functioning of the Office: “to make room and create space” for the registration of trademarks by owners who legitimately use their trademarks, and to prevent the registration of trademarks that are not used or are used inappropriately.
Both procedures offer a faster, easier, and less expensive alternative to the judicial process—which is exorbitantly costly in the U.S.—for canceling trademarks. And that is why, in a jurisdiction with a long history and culture of trademark protection, we may see new trends emerge in trademark protection strategies.
- Through the expungement process, anyone (including the Office itself) may request a ruling on the lack of use in commerce of a trademark. This procedure seeks a declaration of total lack of use in commerce with respect to a registered trademark, for all or part of the claimed goods and/or services. A negative ruling in an expungement proceeding would mean that the trademark has never been used for all or any of the goods or services.
Such a request may be filed with respect to a trademark between 3 and 10 years from the date of registration. However, until December 27, 2023, it is possible to file such a request with respect to any trademark that has been registered for 3 years or more. This exceptional time limit could be interpreted as a sort of incentive to cancel trademarks or to encourage owners to bring their registrations into line with their actual use.
- For its part, the Re-examination procedure allows a third party (as well as the Office itself) to request the cancellation of some or all of the goods and/or services covered by a trademark on the grounds that the trademark was not in use on the filing date of the application or before the deadline for filing a declaration of use, where applicable.
It is important to remember that the U.S. trademark system is based on the“first-to-use”principle and that, depending on the basis claimed in the trademark application, proof of use will be required either before or after the filing date. Therefore, the relevant time period for these purposes will depend on the claim regarding use made in each particular case.
There is no doubt that trademark protection in the U.S. will require owners to make a greater effort in selecting their protection strategies, to have an extremely realistic and accurate understanding of how they intend to use their trademarks, to provide highly precise descriptions of goods and services, and to present solid and sufficient evidence.
Consequently, as of December 27, 2021, trademark owners will not only have to pass the screening of their affidavits of use, but there will also be a risk of trademark cancellation at the request of third parties or the Office itself.
The TMA also clarifies certain aspects of existing procedures:
Thus, in trademark cancellation proceedings before the Trademark Trial and Appeal Board (TTAB), the fact that a registered trademark has never been used in commerce is added as a ground for cancellation. This ground may be invoked after the first three years from the date of registration.
Although it will not take effect until January 1, 2022, the flexibility and shorter timeframes provided for in the TMA are particularly relevant when resolving official actions identified by the Office. The deadlines for responding to an official action will be three months, rather than the generous six months currently allowed.
Finally, we also believe it is worth noting the introduction of a two-month deadline for third parties to file what is known in the U.S. as a “Letter of Protest” (a type of statement or request for evidence) regarding a ground for refusal of trademark registration during examination proceedings.
These are undoubtedly significant changes intended to ensure that the trademark registration process and the smooth functioning of the U.S. market are not undermined; in some cases, they will affect the strategies designed by trademark owners to defend, protect, and maintain their trademarks in a jurisdiction that is essential to the portfolios of trademark owners worldwide.
Author: Cristina Arroyo