If a registered trademark, which is not in use, is or has prevented you from obtaining a registration for your trademark help is finally here. The Trademark Modernization Act’s (“TMA”) is now effective and new procedures for cancelling unused registrations, or registrations with goods and services that were not in use at the time of declaration, are now effective. The Act includes important amendments to the Lanham Act:
1. Establishes two new ex parte proceedings to cancel unused marks.
2. Creates a uniform rule establishing a rebuttable presumption of irreparable harm for trademark infringement.
3. Formalizes the procedure for Letters of Protest.
4. Permits the examiner to set shorter response times for office actions.
This article will focus on point one, ex parte proceedings to cancel unused marks. Under the new TMA, any party, can challenge a registered trademark by filing: i) an expungement proceeding against a mark that is 3 to 10 years old that has never been used in commerce in connection with the registered goods and services; or ii) a reexamination proceeding against a mark less than 5 years old that was not in use for some or all of the goods when the registrant filed its declaration of use.
Those challenges take place before examining attorneys in the Trademark Office. Once a party submits its challenge to the Trademark Office its role in the process is complete. Upon submission and determination that adequate evidence of non-use has been received, the Trademark Office will issue a post-registration Office Action to the registrant. If the registrant does not rebut the case of non-use, all or part of the registration will be cancelled. The outcome can be appealed to the Trademark Trial and Appeal Board (“TTAB”).
The foregoing cancellation proceedings became effective on December 27, 2021, and apply to “any mark registered before, on, or after that effective date.”