Is the number of available trademarks finite? No, but you should be asking a different question: is the number of effective trademarks finite? Absolutely.
In the past few years, trademark registrations have soared, with a noticeable uptick from applicants in China. But in-use trademarks have not risen in parallel – so the system has become cluttered with “deadwood.”
This depletes the number of viable marks available for active business owners. Trademark depletion is not just about losing out on a strong name. An effective mark plays a pivotal role in a business’s success.
The Trademark Modernization Act (TMA) of 2020 was created to streamline the process for canceling unused trademarks. In this way, the USPTO hopes to declutter the trademark database. Read on to learn the TMA’s measures – most went into effect on December 18, 2021.
New Ex Parte Proceedings to Cancel Unused Trademarks
Before the TMA, canceling a trademark was more complicated and expensive. Why?
In previous “inter parties” (“between parties”) court proceedings, the Trademark Trial and Appeal Board (TTAB) might call for discovery and depositions from both parties, rendering them lengthier and more costly.
In contrast, new “ex parte” (“single party”) proceedings have no discovery period. To cancel an unused mark, all that you need to show is substantive evidence that the mark has:
- Never been used in commerce
- Not been used in commerce by a relevant date
We will go into the particulars of these proceedings below.
Expungement Proceeding: Trademark Never Been Used
In this scenario, the registered trademark has never undergone any commercial use for its listed goods or services. This is in contrast to an abandoned trademark or one that has fallen out of use on reasonable grounds.
To prove nonuse, you would need to search for the mark in action in commerce – i.e. advertisements, in a store, on packaging, or displayed on a website – and show that it is not there.
You do have time constraints with an expungement – between three and 10 years after the registration date. The exception: within the first three years of the TMA, you can seek expungement for any trademark, regardless of age. This aims to encourage an initial decluttering.
Reexamination Proceeding: Trademark Filed in Use or Intent-to-Use
If a trademark was registered on the basis of use in commerce or with an intent-to-use, you will need a reexamination proceeding to get it canceled. You would show that the trademark was not in use by a particular “relevant date,” which depends on the situation:
- Use-based registration – the filing date of the application
- Intent-to-use registration – either the filing date of the amendment to allege use OR the expiration date for the statement of use
If you wish to enact reexamination, you have five years from the registration date to do so.
Other Rules Changes to Know About
Other rules underwent changes, as well:
- Shortening of responses times to USPTO office actions
- Greater protection for attorneys fraudulently named as representatives on applications
- Two-month deadline for letters of protest to trademark examination by the TTAB.
Check out the full details of the TMA here.