USPTO UpdateThe Trademark Modernization Act – One Year In

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The Trademark Modernization Act (TMA) went into effect December 21, 2021, creating two new ex parte procedures, expungement and reexamination, to challenge registrations for nonuse. Throughout the past year, the USPTO has received over 180 TMA petitions. The USPTO created a webpage tracking all of the expungement and reexamination proceedings.

If you are considering filing an expungement or reexamination procedure, the USPTO’s page is an excellent resource to review. Additionally, the USPTO has published some tips and best practices (expand the “Limitations of proceedings” and “Best practices” sections.) You can also review Alt Legal’s summary of the USPTO webinar, “Insight into TMA Nonuse Cancellation Petitions.”

Also, be sure to check out Alt Legal Connect, our virtual trademark conference, for the session, “The Ex-Filings: Expungements and ReExaminations Explained.” The panel will explain how and when to file these types of proceedings, discuss what a reasonable investigation involves, and provide tips and strategies to consider based on examples of initiated and rejected proceedings.

Have you filed an expungement or reexamination proceeding? We’d love to hear from you to learn about your process! Please contact Saryn Koche, Marketing Specialist: [email protected].

Additional Alt Legal TMA Resources:

• A PI’s Pringles® — TMA Filings
• A PI’s Perspective: How to Conduct Reasonable Investigations for Expungement & Reexamination Proceedings
• USPTO Update: TMA Expungement and Reexamination Proceedings
• USPTO Implements Trademark Modernization Act (TMA) Final Rule
• The Trademark Modernization Act (TMA)’s New Expungement Procedure
• The Trademark Modernization Act (TMA)’s New Reexamination Procedure 
• How to File an Expungement or Reexamination Proceeding: Step-by-Step TEAS Form Guidance

TMA Proceedings: By the Numbers

(as of December 1, 2022)

202: Expungement and reexamination proceedings filed

103: Expungement proceedings filed

99: Reexamination proceedings filed

106: Petitions initiated

13: Director-Initiated Proceedings

56: Petitions denied

27: Cancellations in whole or in part

Why are TMA Petitions Being Denied? How to Ensure Your TMA Petition Is Initiated

In many instances where the USPTO does not initiate or deny a petition, it will issue a 30-day inquiry letter requesting clarification. When a petitioner responds to a 30-day inquiry, it is not an opportunity to supply additional evidence. Rather, the response is meant to correct technical deficiencies in the original filing. 30-day inquiries have been issued requesting that the petitioner correct errors by:

• Providing an itemized index of the evidence
• Supplying screenshots of links referenced in the petition and/or investigative report
• Including URLs and/or access or print dates for evidence
• Submitting an English translation of relevant non-English wording in evidence, signed by the individual making the translation
• Providing further explanation of the relevance of certain evidence and how it is relevant to allegations made in the petition

You can avoid delays in processing your TMA petition by ensuring that your petition does not contain any of these errors.

In most instances where petitions have been denied, the USPTO claimed that the petitioner had failed to demonstrate a prima facie case to establish expungement or reexamination. The USPTO is not required to provide a detailed response for denying to initiate a proceeding and will sometimes, but not always, provide a few additional sentences explaining their reasoning for denying the petition. The USPTO issues typical blanket responses for denying an expungement or reexamination proceeding:

Expungement – In this case, the petitioner has not established a reasonable predicate that supports a conclusion that the mark was never used on or in connection with the identified goods or in connection with the identified goods in the registration.

Reexamination – The investigation of nonuse set forth in the petition consists of information and evidence that does not establish a reasonable predicate that supports the conclusion that the mark was not in use in commerce on the services in the registration as of the relevant date, which in this case is the filing date of the application. Allegations of either current nonuse or nonuse after the date of registration is not enough.

Terminated Proceeding – No Cancellation

Thus far, there have been very few instances where a petition was initiated, the registrant provided a response successfully demonstrating use of the mark, and the proceeding was terminated, resulting in no cancellation of the mark. In particular, one set of registrations has been preserved after TMA petitions were filed against them.

The petitioner had filed three separate petitions for reexamination for the WATERBIRD marks. The respondent produced a timely response to the petitions, the only substantive responses filed to an expungement or reexamination proceeding thus far. The relevant date is January 16, 2020 and the respondent successfully demonstrated that the marks had been in use as early as September 24, 2019. The respondent set forth evidence that the goods at issue had been sold at a national retailer (Kroger) in Virginia and made to out-of-state residents and transported across state lines to Washington D.C.  Additionally, the respondent claimed that the intrastate sales within Virginia were sufficient to show use in commerce because the labeling and sale of alcoholic beverages are regulated by Congress and therefore have a “substantial effect on interstate commerce.”

After reviewing the respondent’s responses, the USPTO determined that the registrant had demonstrated use of the mark in commerce for all goods listed on the three registrations. As such, the USPTO terminated the reexamination proceedings and ordered no changes to the registrations.

The other instance of note where a registrant successfully argued against a petition for expungement is with reference to the VSMASH mark. The proceeding was terminated after the USPTO determined that the registrant had successfully demonstrated use of the mark.

Terminated Proceeding – Registrant Surrendered Mark

In some instances, it appears that the mere act of filing a petition for expungement or reexamination is enough for the registrant to voluntarily give up their registration. In these instances, after the proceedings were initiated, the registrants surrendered their marks in lieu of providing a substantive response, resulting in cancellation in whole or in part and termination of the proceeding. Some examples include:

STASH HAUS – In this case, the reexamination proceeding was not initiated. It can be inferred that the lawyers for the petitioner and registrant were in discussion and settled on this conclusion to surrender the mark as the USPTO’s decision to not initiate the reexamination proceeding was in March 2022 and the surrender was in May 2022. Since the USPTO decided not to initiate the proceeding, the registrant wouldn’t be particularly incentivized to surrender their mark. But perhaps negotiations between the parties gave the registrant enough incentive to agree to surrender the registration.

POET TREE – In this case, the expungement proceeding was initiated and the registrant, who was not represented by an attorney, voluntarily surrendered the mark in response to the expungement proceeding.

ASTROREALITY – In this case, the petition for reexamination concerned just one of the classes covered under the registration: Class 7. The reexamination proceeding was initiated and in response, the registrant voluntarily cancelled all the goods listed in the registration under Class 7. After cancelling Class 7, the reexamination proceeding was terminated as moot because all of the goods subject to the reexamination proceeding had been deleted.

While this outcome is certainly excellent for the petitioner and the USPTO, as the USPTO does not have to spend time reviewing a response and making a determination, and the petitioner receives precisely the result they were aiming for, it is unusual. Typically, we’ve seen that registrants simply take no action after the USPTO initiates the proceeding, resulting in a default cancellation and termination of the proceeding.

Director-Initiated Proceedings

There have been several instances where the USPTO Director initiated a proceeding after a third-party petitioner filed a proceeding. In some instances, the third-party petition was denied and the Director elected to initiate a petition. In other instances, the third-party petition was accepted and the Director initiated a petition to expand the scope of the third-party petition to include additional goods and services. Petitioners should note that if their original petition is denied and they choose to refile, they must carefully check the registration records to determine if a Director-initiated proceeding has been filed before they submit their second petition. Should the Director initiate a petition before the refiling, the refiled petition will be denied. Director-initiated proceedings include the following and full details can be found on the USPTO Director-initiated proceedings tracking page:

• PERRYHOME – Third-party petition was denied. Director-initiated proceeding was filed.
• NY CHARISMA – Third-party petition was initiated and Director-initiated proceeding was filed, expanding the scope of goods and services under the petition.
• BOTANIC – Third-party petition was denied. Director-initiated proceeding was filed.
• AIR TAGGING – Third-party petition was denied. Director-initiated proceeding was filed.
• SOLOPLAY – Third-party petition was denied. Director-initiated proceeding was filed.
• NUTRIUM – Third-party petition was denied. Director-initiated proceeding was filed. Petitioner proceeded to file a second petition which was subsequently denied.
• PROVBIRD – No third-party petition was filed; this petition was brought solely as a Director-initiated proceeding. The mark was subsequently cancelled.
• IRON IMPETIGO – Third-party petition was filed and subsequently, a Director-initiated proceeding was filed. The registrant filed a response voluntarily surrendering the mark. The mark was subsequently cancelled.
• EVERLOM – Third party was denied. Director-initiated proceeding was filed and mark was subsequently cancelled.
• OYU – Third-party petition was initiated. Director-initiated proceeding was filed, including a broader scope of goods/services than the third-party petition. The mark was subsequently cancelled.
• GALAVAVA – Third-party petition was initiated. Director-initiated proceeding was filed, including a broader scope of goods/services than the third-party petition. The mark was subsequently cancelled.

Re-Filed Proceedings

There have been a few instances where petitioners filed a TMA proceeding and it was denied, and the petitioner went on to re-file a petition. One re-filed petition was denied because it was erroneously filed after the Director initiated a proceeding (see NUTRIUM.) Examples of re-filed petitions include:

• NUTRIUM – Third-party petition was denied, but subsequently, the Director initiated a petition. The petitioner re-filed a petition but it was denied due to pending Director-initiated petition.
• STRATOSPHERE – Third-party petition was denied. The petitioner re-filed, but there has been no determination on it yet.
• CRISTAL ROYAL – Third-party petition was denied. The petitioner submitted a revised petition which was initiated.
• MODERN INTIMACY – Third-party petition was denied. The petitioner submitted a revised petition which is awaiting examination.
• OPPOSITION TO TYRANNY… – Third-party petition was denied. The petitioner submitted a revised petition which is awaiting examination.
• Misc. Design – Third-party petition was denied. The petitioner submitted a revised petition which is awaiting examination

Strategic Concerns for TMA Petitions

After monitoring the TMA proceedings filed this year, we’ve come up with some helpful information that can guide you as you make strategic decisions about your TMA petitions:

• If filing multiple petitions for marks/designs in a group and will be using similar evidence to support your claims, file one petition to start and determine if your evidence is adequate to support your claim and a cancellation. Once you have successfully initiated a proceeding, proceed with filing additional petitions.
• You may re-file your petition if it is unsuccessful. The USPTO does not provide detailed reasoning for refusing to initiate a petition, so you will have to review the USPTO’s instructions to build a stronger prima facie case to initiate the proceeding and secure a cancellation.
• If you choose to re-file your petition, ensure that the Director has not initiated a proceeding in the meantime. If you re-file a petition with respect to the same goods/services in the Director-initiated proceeding, your petition will be denied. See NUTRIUM.
• If the registrant’s attorney has been sanctioned (you can look this information up under Disciplined Practitioners and USPTO Orders Issued), be sure to inform the USPTO in your TMA petition. The USPTO will know this information, but specifically noting this information is particularly helpful with determining whether the proceeding should be initiated.
• Even if your petition is denied, it’s possible that the Director may institute a proceeding after completing an investigation and discovering that there is a prima facie case for expungement or reexamination. Do not rely on a Director-initiated proceeding to save a denied petition, but this is important to keep in mind when advising and strategizing with clients.
• There is a very high likelihood of success once a petition has been initiated. Most often, the registrant will not respond, the registration will be cancelled, and the proceeding will be terminated. In some instances, the registrant may even surrender the mark before the USPTO has made a determination.

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