November 23, 2021

The New “Cancel Culture” at the USPTO

3 min

In the next phase of implementation of 2020’s Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) will open two new ex parte cancellation proceedings on December 27. These proceedings were created as part of the USPTO’s broader goal of eliminating overbroad and questionable registrations from the registry. However, the implications of these proceedings will be felt by all applicants/registrants.

Dubbed expungement and reexamination, in each case third parties may request cancellation of some or all of the goods/services of a registration.

  • Expungement considers whether the registration was ever in use and may be filed between the third and tenth years after registration (although they may be filed against any registration until December 27, 2023)
    • Available against all marks
  • Reexamination considers whether the mark was in use as of the date an application was filed (if filed based on use) or, if the application was intent-to-use, the later of the date an Amendment to Allege Use was filed or the date that the deadline to file a Statement of Use expired. It may occur anytime in the first five years of registration
    • Available against only use or intent-to-use based marks; not available if mark issued based on foreign registration (either nationally filed or through the Madrid Protocol)

The proceedings can be initiated by third parties with the submission of a petition supported by evidence of nonuse, as well as a filing fee; the Director may also initiate proceedings on its own. If there is a prima facie case for cancellation, the Director will issue an office action to which the registrant may respond with evidence of use or deletions to the challenged goods/services. If the registrant does not submit a satisfactory response, a final office action may be issued, which the registrant may ultimately appeal to the Trademark Trial and Appeal Board.

While the new proceedings may act as effective offensive tools for parties looking to overcome obstacles or clear the Registry, they require defensive measures from all parties in order to avoid cancellation and the time/expense that accompanies these efforts.

  • All applicants/registrants, should:
    • Ensure that correspondence information with the USPTO is up to date in order to receive any notifications that may issue
      • For foreign applicants/registrants, make sure you have a domestic representative on file to receive correspondence from the USPTO
    • Maintain detailed evidence of use (including dates) so this information is easily accessible if a cancellation arises
  • Nonuse-based applicants, should:
    • Consider eliminating superfluous goods and services from the identifications of goods and services—items that are clearly unrelated to the applicant’s goods/services may make the mark a target for cancellation
    • Prolong the application’s pendency if the mark will not be timely used on all of the goods/services
  • Use-based applicants and registrants completing maintenance filings, should:
    • Consider submitting extensive evidence of use showing use of the mark on more than one item per class, as this may deter third-party attacks or prevent the USPTO from instituting one
      • This may also help avoid “random audits,” which have become increasingly common

We will continue to monitor developments in these new proceedings and report on any significant updates. If you have questions, please feel free to contact a member of the Venable Trademark Group.