New procedures for canceling the law on modernization of trademarks are now in force – Intellectual property

United States: New Cancellation Procedures for the Modernization of Trademarks Act Now in Force

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Does an unused trademark prevent you from deleting or registering your trademark? Or was the blocking record filed for products or services that were not being used when the registrant claimed they were? As we reported in The Trademark Modernization Act established new trademark cancellation procedures earlier this year, the new Trademark Modernization Act (“TMA”) procedures for revoking unused registrations, or registrations with products and services that were not used at the time of reporting are now effective.

Any party, regardless of its status, can challenge a registered trademark by filing: i) expungement proceedings against a mark 3 to 10 years old that has never been used in commerce in connection with the registered goods and services ; or (ii) a review proceeding against a mark less than 5 years old which was not in use for some or all of the goods when the registrant filed his declaration of use.

These challenges take place before the examining attorneys of the Trademark Office under the supervision of the Director, and do not involve the Trademark Trial and Appeal Board (“TTAB”) unless the proprietor appeals the result. Upon receipt of a challenge to a registered trademark containing sufficient evidence of non-use, the Director will issue a post-registration Office action. The declarant then has three months to respond, which he can extend by 30 days for $ 125. If the registrant does not refute the prima facie case of non-use, the director will cancel all or part of the recording as the situation requires. In either case, the challenger has no further involvement beyond the initial bid.

The TMA also formalized the process for submitting a letter of protest against a pending trademark application, which anyone can do by submitting evidence and a $ 50 fee. The investigating lawyer then has two months to determine whether to include the evidence filed in the prosecution case. The applicant still has the opportunity to rebut this evidence in the prosecution.

Finally, the deadline for responding to an action by the Office will remain six months until December 1, 2022, when it will be reduced to three months with the possibility of extending by three months for an amount of $ 125.

Owners of trademark registrations in the United States may wish to review their registrations and consider preventively removing products that were not used at the time of their declaration, or re-filing trademarks under Sections 44 ( e) or 66 (a) which have never been used. It is free to do so outside of a write-off or review proceeding, while removing goods from a proceeding costs $ 250 per class. Mintz trademark advice can help you assess your trademark portfolio for this purpose, or challenge vulnerable third party registrations under the new streamlined procedures.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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