Initiatives to remove

Initiatives to remove "dead wood" (unused) trademarks from register

  • 09 June, 2024
  • Nyall Engfield

Initiatives to remove "dead wood" (unused) trademarks from register

The USPTO has implemented several initiatives in recent years to remove "dead wood" (unused) trademarks from the register:

  1. Trademark Post Registration Audit Program
  • Launched in November 2017, the USPTO randomly audits trademark registrations with Section 8 or 71 maintenance filings (in practice, it selects any goods/services that have no specimen associated thereto) to verify the mark is in use on all registered goods/services.
Registrations with at least one class containing 4+ goods/services or at least two classes with 2+ goods/services each are subject to audit.If audited, the registrant must provide proof of use for 2 additional goods/services per audited class. Failure to respond results in cancellation of the registration.Registrants can delete goods/services not in use, but must pay a $250 per class deletion fee. Failure to pay the fee results in cancellation of the entire registration.The program has resulted in cancellation or deletion of goods/services in over 50% of audited registrations so far.
  1. Trademark Expungement and Reexamination Proceedings under the Trademark Modernization Act (TMA)
  • Effective December 18, 2021, any party can file an ex parte petition to cancel a registration in whole or part if they can show the mark was never used (expungement) or not in use as of the relevant date (reexamination).
For expungement, the petition can be filed 3-10 years after registration. Until Dec. 27, 2023, it can be filed against any registration 3+ years old.For reexamination of a Section 1 registration, the petition must be filed within the first 5 years after registration.The petitioner must include evidence from a reasonable investigation showing nonuse. If the USPTO institutes a proceeding, the registrant will have a chance to provide rebutting evidence or delete goods/services.These proceedings provide a faster, less expensive alternative to a contested cancellation proceeding at the TTAB to cancel registrations for marks not in use.
  1. Streamlined TTAB Cancellation Procedures
  • The TMA established a new nonuse ground for cancellation at the TTAB and allows a petitioner to submit evidence from the USPTO's own electronic records to support a nonuse claim.
A competitor facing issues with a potentially dead wood trademark registration can utilize these initiatives in the following ways:
  1. Monitor post-registration audits - If the blocking registration is audited, the competitor can review the registrant's response to see if they are able to verify use or if goods/services of concern are deleted.
  2. File an expungement or reexamination petition - The competitor can conduct an investigation to find evidence of nonuse and file a petition asking the USPTO to institute a proceeding to cancel the registration in whole or part. This allows them to clear the unused mark from the register without a costly TTAB proceeding.
  3. File a TTAB cancellation petition - If the registration is less than 3 years old, the competitor can still file a cancellation petition at the TTAB alleging nonuse and rely on USPTO records as evidence.

By monitoring these USPTO initiatives and utilizing the new expungement, reexamination, and TTAB cancellation procedures as needed, competitors can be proactive in clearing the register of unused marks blocking their own applications. The USPTO's efforts, combined with diligent use of these tools by stakeholders, will help ensure the register accurately reflects marks in use.

Recent Challenges of "Dead Wood" Trademarks

There have been some recent developments and cases related to successfully challenging "dead wood" trademarks:

  1. The Trademark Modernization Act (TMA) of 2020 introduced new ex parte expungement and reexamination proceedings as of December 18, 2021. These provide an alternative to contested cancellation proceedings for removing unused registrations.
  2. In the first year after the TMA took effect (Dec 2021-Dec 2022), there were 207 third-party petitions filed - 105 for expungement and 102 for reexamination. The USPTO also instituted 33 Director-initiated proceedings during this time.
  3. Of the 118 third-party proceedings instituted by the USPTO, the registrant was only able to prove use and overcome the challenge in 4 cases so far. In 29 cases, the registration was fully or partially cancelled due to the registrant failing to respond. The remaining instituted cases are still pending.
  4. For the 33 Director-initiated proceedings, 7 registrations were fully or partially cancelled for failure to respond, 1 was voluntarily surrendered, and the rest are pending.
  5. Some key reasons the USPTO has refused to institute proceedings include the petitioner failing to conduct a sufficiently comprehensive investigation, only submitting evidence like a few internet searches.

So in summary, the new TMA expungement and reexamination proceedings appear to be an effective tool so far for challenging dead wood registrations, with many registrations already cancelled in the first year and more cases pending. The key is for petitioners to conduct a thorough investigation and present a strong prima facie case of nonuse to get the petition instituted by the USPTO. The proceedings are likely to continue gaining traction as more stakeholders utilize them to clear the register of unused marks.

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