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The Trademark Modernization Act (TMA) was passed in December 2020 and is slated to go into effect on December 18 of this year. Rather than making sweeping, substantive changes to trademark law, the TMA is intended to give the United States Patent and Trademark Office (USPTO) new avenues for removing unused or fraudulent trademark registrations from the federal trademark register. Such registrations add “dead weight” to the trademark register and can prevent legitimate trademark applicants from registering their marks. Among other provisions, the TMA does this by creating two new procedures for challenging unused trademark registrations: ex parte expungement and ex parte reexamination. If you are having difficulty registering your trademark due to an existing, unused registration, please contact an Alabama trademark lawyer.
Ex Parte Expungement
The new ex parte expungement proceedings allow any third party (or the Director of the USPTO) to file a petition requesting the cancellation of a registered mark for some or all of the goods and/or services in the registration based on an allegation that the mark has never been in use in commerce in the United States. A petition for ex parte expungement must be filed within three and 10 years after the mark’s registration date. The petitioner must present a prima facie case of nonuse by presenting evidence of nonuse and showing that it undertook a reasonable investigation regarding whether the trademark had ever been in use in commerce. Once instituted, the registrant may then present evidence of use or excusable nonuse, or it may voluntarily delete all of the challenged goods or services from its registration.
Ex Parte Re-examination
The new ex parte re-examination proceedings allow a party to request the cancellation of some or all of the goods and/or services in a use-based registration based on an allegation that the mark was not in use in commerce with those goods or services prior to a “relevant date.” The relevant date can be any one of the following:
- The filing date for a use-based application
- The date an amendment was filed to allege use
- The date the deadline to file a statement of use expired
A petitioner must file a petition for ex parte re-examination within the first five years of registration. Similar to ex parte expungements, the petitioner must present a prima facie case by presenting evidence of nonuse and showing that it undertook a reasonable investigation. If a proceeding is instituted, the registrant may also respond by showing evidence of use or acceptable nonuse or deleting the challenged goods and services.
Contact an Alabama Trademark Lawyer
The new ex parte expungement and ex parte reexaminations give trademark applicants an additional tool to clear the federal register of unused marks to make way for their marks. For more information about the TMA or any other aspect of trademark registration, please contact an Alabama trademark lawyer at AdamsIP by calling 251-289-9787 or by using our online contact form. Our offices are located throughout Alabama, including Mobile, Huntsville and Birmingham.