Trademark Law Alert – Additional Guidance on Trademark Exemption and Review Requests
Ten months have passed since the Trademark Modernization Act (TMA) 2020 was implemented through regulation. (See our previous post on the TMA). The United States Patent and Trademark Office (USTPO) now provides clearer guidance on what it will take to expunge or force reconsideration of “deadwood” registrations on the Federal Trademark Register.
The TMA allows anyone to file an action with the Director of the USPTO to cancel the registration of a mark that has not been used for the registered goods or services. More than 150 petitions have been filed, many of which were initially denied for failure to present sufficient evidence of non-use or non-compliance with procedural filing requirements.
The TMA requires a registrant to make a “reasonable inquiry” before filing a petition with the Director of the USPTO to expunge or reconsider a registration for non-use of the mark. However, proving a negative can be difficult without a formal investigation, but the USPTO has made it clear that hiring a private investigator is not necessary to initiate action.
USPTO Trademark Examination Procedure Manual Section 1716.02(c)(ii) lists certain sources that applicants can rely on to prove that a mark has not been used. These include:
- State and Federal Trademark Registries;
- Internet sites and other media that may be owned or controlled by the domain name holder or purport to be owned or controlled by the domain name holder;
- Internet sites, other online media and publications in which the goods and/or services concerned would probably be advertised or offered for sale;
- Printed sources and web pages that may contain reviews or discussions of the relevant products and/or services;
- Records of filings made with or actions taken by any state or federal business registration or regulatory agency;
- The registrant’s market activities, including, for example, any attempt to contact the registrant or purchase the relevant goods and/or services;
- Records of litigation or administrative proceedings reasonably likely to contain evidence of the owner’s use or non-use of the registered mark; and
- Any other reasonably available source containing information establishing that the mark has never been used in commerce (cancellation) or was not used in commerce at the relevant date (re-examination), on or in connection with the goods and/or or services concerned.
A review of the evidence that has worked in actual filings since the TMA was implemented in December 2021 is the best tool filers can refer to before taking action. The USPTO website includes a list of all petitions filed to date. You can learn how and what to do just by looking at these repositories.
Here are some examples of successful petitions and the evidence cited:
1. CANCELED – Registration for GALAVAVA (word mark), Reg. No. 5513424
The plaintiff, an attorney, filed a motion to strike claiming that the use specimen was forged from a publicly available Getty Images stock photograph (note the tag added to the specimen):
The attorney further conducted online searches of both a galavava.com website that was “down” and a general online search for offers of sale or any evidence of use of the mark.
Practical advice: Note that anyone can file a petition, not just an aggrieved trademark owner.
2. DELETED GOODS – Registration for RUBINS and Design, Reg. No. 5435359
The applicant, a company, requested the partial cancellation of goods in class 30 for non-use of the mark. Once instituted, the holder voluntarily removed goods. The applicant relied on the following evidence in its filing:
- No evidence of use was found in general web searches that would typically reveal use of these types of products. Key to the petitioner’s evidence was his explanation to the USPTO of his search strategies. It offered Google searches with no date range explaining that even pages that had become obsolete or temporarily unavailable would show up in search results. The applicant also refined her search because RUBINS is a common surname, and she explained in detail her exact search criteria.
- The major US e-commerce websites, Amazon.com and Walmart.com, were searched in their grocery and food sections, as the holder’s registration covered food products. Again, the petitioner included his search criteria so that the USPTO could see the in-depth nature of his search.
- A close examination of the Registrant’s own website revealed no use of the mark for the challenged goods. The petitioner noted that the incumbent’s website was not in English (suggesting that it did not sell to US consumers) and that it was at a business that did not offer the targeted products. It also offered current and older business information pages (from the Wayback Machine) to further demonstrate that the reporter’s food business did not sell the particular registered products.
3. CANCELED – Registration for SURFSTAR WAKE and Design, Reg. No. 5239764
The applicant, a company, requested the cancellation of the registration on the ground that the mark had never been used for the registered goods, namely certain boat parts. The petitioner informed the USPTO of the nature of the registered goods, which included parts of “wakeboard tower” type boats. The explanation was essential because, as the petitioner explained, the specimens submitted were simply brochures alluding to a different type of boat part. Petitioner also submitted searches from the Wayback Machine of archived pages of the Licensee’s website for the period 2016-2019, a review of the Licensee’s Facebook, Instagram and YouTube pages, and a general Google search, which did not all showed no use of the holder’s property. The petition was instituted and the registration revoked.
Given the large number of petitions that have not been instituted due to flawed evidence or other procedural flaws, the key to remember is to read the rules carefully, explain to the PTO why your evidence is not valid. useless and not to be trapped by procedural procedures. rules, such as the requirement to submit an index of evidence and to insert a date and place stamp for websites.
Although the expungement/re-examination petition is not a quick procedure, it is cost-effective and could become a key tool for clearing the trademark register when your company’s new trademark is stuck with “dead wood” on the register.