USPTO streamlines removal process for unused trademarks
Regulations to streamline the way in which unused registered trademarks can be removed from the trademark register will be coming into effect on December 18, according to the US Patent and Trademark Office (USPTO).
The 128-page docket containing the full detail of the USPTO’s amendment to the rules of practice in trademark cases is due to be published in the Federal Register today, November 17.
Speaking to WIPR, a USPTO spokesperson said that the regulations will result in individuals, businesses, and the USPTO itself having “new tools to clear away unused registered trademarks from the federal trademark register”.
This will occur when the regulations implementing the Trademark Modernization Act of 2020 come into effect—that being, December 18.
The new procedures being introduced are ex parte expungement and re-examination proceedings. They are intended to provide an easier and cheaper way to cancel a trademark that has never been used in commerce, which the USPTO believes will improve the integrity of the trademark register.
Once the regulations are in force, the USPTO will have the power to remove registration categories for goods and services for which a registered trademark has not been used through these new procedures.
The USPTO spokesperson explained: “The new ex parte expungement and re-examination proceedings provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceedings at the Trademark Trial and Appeal Board.”
The proposals to amend the Trademark Modernization Act in such a way were announced in May 2021, and, at the time the USPTO proposed a fee of $600 for each challenged class of products targeted in ex parte expungement or re-examination.
In today’s docket—which comes following a period of public comment—the USPTO has instead set the fee at $400 per class. The docket states that it aims to “strike a balance” between the costs associated with conducting the proceedings and providing a cheaper alternative to contested inter partes cancellation proceedings.
The USPTO had considered setting the fee at $1,000 per class of goods or services, but it was concluded that this would be too high in light of the USPTO’s objective to provide an inexpensive mechanism for the cancellation of an unused registration.
The regulations also provide for further changes to take effect next year; the USPTO spokesperson said that the USPTO will have the ability to move applications through the registration process more efficiently as of December 1, 2022, due to the shortening of response period timescales.
The provisions will not come into force until next year because they require significant changes to the examination processes and the USPTO’s IT systems, the docket said.
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