Category Archives: Cancellation

More on the USPTO’s New Expungement and Reexamination Proceedings

by Christina Frangiosa

Since the Trademark Modernization Act (TMA) was enacted in December 2020 (see prior post), certain of its provisions have gone into effect, and others are on the immediate horizon. For context, see the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – and specifically p. 1020 for the text of the TMA.

Most recently, on November 17, 2021, the USPTO published its Final Rules relating to the implementation of the TMA, which primarily focus on the implementation of the new TTAB proceedings (expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation.  The Rules also address letters of protest, flexible deadlines to respond to Office actions, recognition of attorneys representing trademark owners, and related fee setting (which will be covered in separate posts).

This post provides a brief update on the new expungement and reexamination proceedings.

The USPTO has continued to update its online guidance regarding the changes to Trademark Office procedure that result from the TMA.  In particular, the USPTO provides a quick reference guide explaining which proceedings are useful for which purpose and the relevant timelines for filing.  Initiating one of these proceedings requires electronic filing: https://www.uspto.gov/trademarks/apply/expungement-or-reexamination-forms.

The USPTO also published a recorded webinar on March 29, 2022 to walk through the new proceedings – along with the USPTO’s slide deck from that March 29 webinar.

Since the implementation of the new proceedings, and at the request of various stakeholder groups, the USPTO has published two tracking tools:

Next time:  Flexible Response Times and Expiration of Recognition of Attorney Representation Following Registration

Trademark Modernization Act Signed Into Law

by Christina Frangiosa

On December 27, 2020, President Trump signed into law the Consolidated Appropriations Act of 2021 (H.R. 133 – as enrolled) which included the full text of the Trademark Modernization Act of 2020 (“TMA”) as modified from the versions originally introduced on March 11, 2020 as H.R. 6196 and S. 3449. See H.R. 133 at 1019-1029; see also H. Rept. 116-645* at 37-57 (Dec. 14, 2020) (report by House Committee on the Judiciary in support of H.R. 6196).

Purpose of the TMA

At its core, the TMA provides some new tools aimed at “decluttering” the trademark Register of those registrations for which a registered mark was either (1) never used in connection with the recited goods or services, or (2) not used as of an operative date (either the filing date of the application if it was submitted based on existing use in commerce, or the date identified on a Statement of Use/Amendment to Allege Use for an intent-to-use application) – thus suggesting that these registrations should never have been issued. The House Judiciary Committee explained that these new proceedings are intended to “clear registrations from the trademark register for which proper use in commerce was not made.” H. Rept. 116-645* at 37 (Dec. 14, 2020).

Legislative history suggests that this Act was aimed at addressing the “recent rise in fraudulent trademark applications,” particularly those from China, that impede legitimate efforts to launch new marks into the marketplace. Id. at 39.  As of September 2018, applications emanating from China had increased by more than 1100% over the prior 6-year period, and investigations revealed that a significant number of these applications “have fraudulent claims of use and/or fake specimens” supporting the registration. Id. Rep. Johnson (one of the co-sponsors of the House Bill) lamented the difficulty small businesses face in obtaining registrations for “strong, commercially viable marks”, especially when “[t]his market-entry problem has been exacerbated by the recent flood of fraudulent trademark registrations from China, many of which rely on doctored photos to demonstrate use of a mark to fraudulently obtain a trademark registration.” One-Page Summary ¶ 3-4. Ideally, these new proceedings will help create a cost-effective mechanism to clear the Register of this narrow set of blocking registrations for which no valid use could be demonstrated.

Provisions of the TMA

Some highlights from the Act (H.R. 133 at 1019-1029):

  • Permits flexible response deadlines for certain Office actions issued by examining attorneys during prosecution of trademark applications – such that some responses would be due between 60 days and 6 months, instead of the standard 6 month deadlines. TMA, Sec. 224. More details about these flexible response deadlines and associated fees to request extensions up to the full 6-month period must be established by regulation within the next year.
  • Creates two new ex parte proceedings to allow for further examination or cancellation of registrations when the registered marks either have never been used in commerce (expungement), or were not used as of a relevant time period (reexamination). TMA, Sec. 225(a) and (c) (creating processes under Section 16A and 16B).
  • Creates an additional ground for cancellation in a proceeding before the Trademark Trial and Appeal Board where a mark covered by a registration was never used in connection with some or all of the goods or services covered by the registration. TMA, Sec. 225(b).
  • Codifies the rebuttable presumption of irreparable harm, resolving a Circuit split involving the standard for proving entitlement to an injunction for violations of the Lanham Act. TMA, Sec. 226.
  • Commissions a study of the effectiveness of this Act – focusing on the time period between 12 months and 30 months after enactment and addressing several targeted areas relating to attempts to reduce inaccurate and false claims of use in commerce of marks registered with the USPTO. TMA, Sec. 227.
  • Confirms the USPTO Director’s authority to “reconsider, modify or set aside” a decision of the Trademark Trial and Appeal Board in interference, opposition, concurrent use or cancellation proceedings in connection with the Principal Register, in connection with ex parte appeals of an examiner’s refusal to register the mark of an application, or the cancellation of registrations on the Supplemental Register. TMA, Sec. 228.

More On Expungements and Reexaminations

Ex Parte Expungement Proceedings

Expungement applies when a registered mark has never been used in commerce in the U.S. in connection with the goods or services covered by the registration. TMA, Sec. 225, Sect. 16A(a). There are some important exceptions for those relatively new registrations that were filed under Section 44(e) (based on a foreign registration) or under Section 66 (requesting an extension of protection from a foreign application filed under the Madrid Protocol) within the statutory period for proving use in the U.S. Id., Sect. 16A(f) (describing showings of excusable non-use).

A petitioner can only seek expungement between the third and tenth years after registration – which takes into account not only the initial three-year period following registration during which Section 44(e) or Section 66 registrations are not subject to cancellation for non-use, but also caps exposure for these ex parte claims to a maximum of ten years following registration. Id., Sect. 16A(i). In essence, expungement proceedings are intended to target those relatively new registrations for which use never occurred, and, theoretically, the registration should never have issued.

(Note that inter partes cancellation proceedings are not estopped by these proceedings; a new grounds for an inter partes proceeding seeking cancellation of registrations for which the registered marks were never used in connection with the recited goods or services was also created by this Act.  Id., Sect. 16A(b).)

Ex Parte Reexamination

Reexamination applies when a mark was not in use in U.S. commerce in connection with some or all of the goods or services recited in the challenged registration as of a relevant date.  For use-based applications, the “relevant date” is the date of filing of the initial application. For intent-to-use applications, the “relevant date” is the date on which a Statement of Use or Amendment to Allege Use is filed, or when all approved extension to file these have expired. TMA Sec. 225, Sect. 16B(b).

A petitioner can only seek reexamination within the first five years after a registration issues. Id. Sect. 16B(i). This provision aligns with the current time periods under 15 U.S.C. § 1064 for cancellation of a registration on all available grounds, given that some grounds for cancellation are not available after this initial five-year anniversary.

Features Common to These New Ex Parte Proceedings

In both cases, there are certain protections built into the process against misuse of the proceedings by bad actors, such as competitors seeking to tie up a legitimate user by maliciously invoking these proceedings. First, while any third-party can file a petition seeking expungement or reexamination, every petitioner must submit documentary evidence supporting the claim – and the Director has discretion not to institute a proceeding if the Director finds that the evidence is insufficient. The statute requires the Director to promulgate regulations within the next year defining the specific procedures, types of and volume of evidence required to support a prima facie case justifying the institution of proceedings and the requisite filing fees. TMA, Sec. 223 & Sec. 225, 16A(c) & 16B(c).

Registrants have an opportunity to submit counter evidence to prove that their marks are in use in connection with the applicable goods and/or services. Once registrants meet their burden to prove such use, no further ex parte proceedings under this section will be permitted against the same goods and services of this registration and estoppel will apply – regardless of who the petitioner is. TMA Sec. 225, 16A(j) & 16B(j).

The Director also has the discretion (1) to decline to institute proceedings, notwithstanding any evidence submitted by a petitioner, (2) to institute proceedings on the Director’s own initiative based on evidence that he or she discovers independently, and (3) to reconsider, modify or overrule a decision of the TTAB in these cases. This discretion may act as an appropriate check and balance against a potential misuse of these proceedings.

Availability of These Proceedings

Before either of these new proceedings will be available, the USPTO will have to engage in rulemaking within the next year to establish specific evidentiary requirements, procedures to challenge applicable registrations and respond to petitions filed, and the requisite filing fees. As a result, these proceedings are not scheduled to be available to interested parties until December 2021.

Potential Impact of TMA on Trademark Registrants with Legitimate Use in the U.S.

Unfortunately, while the legislative history makes clear that the sponsors intended this Act to target a narrow type of fraudulent activity by foreign actors, as written this Act has a potentially broader impact. Even registrants who can demonstrate legitimate use in the U.S. may also find themselves defending proceedings under this Act.

Accordingly, registrants should be proactive and prepare to defend such challenges by, among other steps:

  • Keeping records documenting use in the U.S. of their registered marks in connection with the goods and services recited in the registration, to be produced on demand quickly and without significant operational expenses at the time the challenge is made;
  • Carefully identifying the correct “dates of first use” on their applications to avoid exposing the resulting registrations to potential reexamination (and cancellation) if their dates prove to have been (fatally) inaccurate;
  • Regularly reviewing their portfolios and confirming that their marks remain in use in the U.S. in connection with all of the goods or services claimed in their registrations – particularly when they are required to submit Declarations of Continued Use during the maintenance periods; and
  • Any time there is no use of the registered mark in connection with specific goods or services recited in the registration, making written records of the registrant’s intent to resume use and documenting steps taken to resume use.

In light of COVID-related business interruptions, many trademark owners may have seen related supply chain interruptions that impact whether or not they can distribute goods bearing their relevant marks in the marketplace in order to preserve their trademark rights. In some instances, these kinds of interruptions might qualify for “excusable non-use” that might avoid a cancellation, but a careful evaluation of the registrant’s portfolio or pending maintenance deadlines might be in order to determine whether these exceptions might apply in a particular case.

Summary

The purpose of all of these new provisions is to strengthen the Register of marks in the USPTO’s system. It is possible that these new proceedings could be a welcome tool for trademark owners seeking cost-effective ways to clear away marks that managed to reach registration despite the registrant’s failure to properly use the marks in U.S. commerce.  In particular, these new ex parte proceedings could help clear some deadwood from the Register, since many registrants would not attempt to defend registration for marks not in use.

The U.S. registration system does not permit registrants to merely reserve rights in marks to be used at a later time in order to prevent others from using them in connection with their own goods or services – but once an application matures to registration, it becomes more difficult (and expensive) to challenge these registrations on an inter partes basis, even if there were proof of fraud.  Once the effective date for these new proceedings occurs, and following the implementation of sufficient regulations regarding the process and evidentiary requirements, these tools could prove valuable to U.S. trademark holders as cost-effective ways to clear the way for registration of their own marks.

Other USPTO Programs Designed to Combat Fraudulent Filings

  • Mandating that foreign filers must engage U.S. counsel in order to prosecute an application and requiring mandatory electronic filing for all applications and TTAB proceedings – see “USPTO Published New Exam Guide on Mandatory Electronic Filing,” Privacy and IP Law Blog (Feb. 7, 2020) (includes links to the exam guides and proposed/final Mandatory US Counsel and Mandatory Electronic Filing rules).
  • Procedures to examine questionable or fraudulent specimens – see “USPTO’s Recently Announced Pilot Program on Fraudulent Specimens,” Privacy and IP Law Blog (June 12, 2018).
  • Developing and testing automated systems to check the validity of specimens submitted in connection with applications, called the “Automated Specimen Analysis Project” – see discussion in TPAC’s Annual Report 2020 at 14 (Nov. 3, 2020).
  • Heightened verification of declarations and specimens submitted with post-registration renewal applications through a post-registration audit program – see “USPTO Expands Random Audit Program,” Privacy and IP Law Blog (Aug. 11, 2019).

Additional Resources regarding the TMA

* As this article went to publication, the link to House Rept. 116-645 as stored on Congress.gov did not work.  However, this link was provided in the listing of actions take in connection with H.R. 6196, a prior version of this bill.  It is hoped that the broken link to the official copy will be fixed soon.   

Fraud on the PTO – A Trademark Perspective

by Christina Frangiosa

Last Friday (April 9), during the American Bar Association Intellectual Property Law Section conference, I delivered a presentation on Trademark Prosecution Ethics, and in particular, the history and current status of the fraud in the procurement theory used to cancel registrations (or oppose applications) when material misrepresentations have been made to the Patent & Trademark Office during the application or renewal process.

I plan to upload both my article and my PowerPoint presentation to my firm’s web site as quickly as feasible, and you are welcome to review them there. In sum, however, my conclusions were as follows:

“While the test for determining that an applicant’s or registrant’s conduct in filing an application or maintaining trademark registrations was fraudulent has become more stringent, applicants, registrants and their counsel still face some pitfalls in the process. Indeed, although certain amendments of an inaccurate filing may be accepted (provided that no challenge to the validity of the application or registration has yet been filed), it is clear that both the TTAB and the Federal Circuit discourage carelessness in preparing these filings.

Accordingly, applicants and registrants are strongly encouraged to do at least the following to avoid increasing the risk of claims or counterclaims of fraud on the USPTO, and thus, loss of a pending application or a particular registration:

  • Conduct appropriate due diligence to ensure that the marks sought to be registered (or renewed) qualify as “in use” or validly subject to the “intent to use” process;
  • Ensure that the intended signatory for the declaration has the appropriate level of personal knowledge to support the allegations of use or intent to use, exclusive right to use the mark and other averments of fact;
  • Ensure that any licensees upon whose use the applicant/registrant will rely to maintain the registration properly use the mark in commerce and provide sufficient evidence to the applicant/registrant to support the maintenance filing; and
  • Undertake proper due diligence before filing an Opposition or Cancellation proceeding to ensure that the trademark or service mark forming the basis of a challenge to another application or registration does not have any exposure to a counterclaim for fraud on the USPTO and thus at risk for cancellation during the pendency of the proceeding.

Note that undertaking these preparations cannot completely moot claims of fraud on the USPTO, but they lend support and reasonableness to a potential response that no “intent to deceive” can be demonstrated by clear and convincing evidence. Finally, this entire line of cases confirms that the USPTO, TTAB and Federal Circuit Court of Appeals have strong interests in ensuring that the trademark Register be kept current and accurate, and demonstrates a disfavor of carelessly filed and unreliable factual statements about the use or non-use of trademarks and services marks in active use in U.S. commerce.

I welcome your comments.

UPDATE on 4/20/10: The slides from the presentation can be found on the ABA’s IPL Section site.

UPDATE on 5/7/10: The published article and the accompanying slides are now available on my firm’s web site. The direct links are here: “Ethics in Trademark Application Prosecution: Alleging ‘Fraud in the PTO’ After In re Bose,” ABA Intellectual Property Law Section 25th Annual Conference (April 9, 2010) – (with presentation slides).

SDNY Orders TAVERN ON THE GREEN Service Mark Cancelled for Fraud

by Christina Frangiosa

In a recent decision, the United States District Court for the Southern District of New York granted the City of New York’s motion for summary judgment, thus cancelling the City’s former licensee’s service mark registration for the mark TAVERN ON THE GREEN in connection with restaurant services on the ground that the registration was fraudulently procured. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (S.D.N.Y. Mar. 10, 2010) (ECF Document No. 40). Access to a valid PACER account may be required to access the court filings cited in this blog entry. Alternatively, see Justia’s docket report – sometimes they make public filings available on their site.

Case Background

In 1934, the City of New York opened a restaurant in Central Park called “Tavern on the Green” and hired various vendors over time to run the restaurant pursuant to operating agreements. Id. at 4. The restaurant closed periodically for renovation and “improvements,” and the City paid substantial portions of the renovation costs. Id. For instance, in 1956, the restaurant closed for a $400,000 renovation project, which enabled the restaurant to expand its inside seating capacity from 300 to 720 and for which the City covered approximately 80% of the cost. Id.

In 1973, the City entered into a license agreement with Warner LeRoy (and thereafter Tavern on the Green, L.P. to whom LeRoy’s interest in the agreement was transferred) to operate “Tavern on the Green” as a restaurant and cabaret. Id. at 5. Several key terms in this first license agreement between these parties were: 1) the licensee’s ability to change the name of the restaurant upon written approval from the City’s representative; 2) the City’s ability to approve (or reject) any manager that the licensee hired to run the restaurant; 3) the requirement that the licensee hire “a sufficient number of trained attendants” (presumably waiters/servers) and 4) the requirement for the attendants to wear “a City-approved uniform.” Id. at 5-6. The parties also agreed that certain renovations were to be completed before the defendant could open the restaurant for business. Id. at 5. The agreement was renewed in 1976 and the restaurant re-opened for business 1978. Id. & n.2.

In 1985, the parties re-negotiated the terms of their agreement to add the following new provisions: 1) that the City could regulate the times and manner of operation; 2) that the City could inspect the facility at any time; 3) that City approval was required for all signs and solicitations for business; and 4) that the food served by LeRoy would be “pure and of good quality.” Id. at 7. Removed from this revised agreement was LeRoy’s ability to change the name of the restaurant, even if he obtained written approval from the City. Id. at 6. After this agreement was executed, the City exercised its rights to govern the hours of operation and the types of events the occurred on the premises several times. Id. at 7.

LeRoy’s Service Mark Application

In 1978, LeRoy filed a trademark application for the mark TAVERN ON THE GREEN in connection with restaurant services on behalf of a joint venture that had been formed to operate the restaurant (“the joint venture”) and claimed a date of first use of August 31, 1976, which corresponded to the date on which the restaurant was re-opened after the 1973 renovations were completed. Id. As part of his application package, he signed a declaration that confirmed that the joint venture had the right to use this mark and “to the best of his knowledge and belief, no other person, firm, corporation or association has the right to use said mark in commerce, either in the identical form or in such near resemblance thereto as to be likely . . . to cause confusion, to cause mistake, or to deceive. . . .” Id. at 8. However, LeRoy did not disclose the 1973 agreement to the USPTO, nor did he inform the City of New York that he had applied for registration of this mark. Id. The application was ultimately approved and registered in 1981 (Reg. No. 1,154,270) without a single opposition. Id.

In 1986, the joint venture filed a Section 15 affidavit, claiming incontestability of the mark based on continued use throughout the preceding five years. The USPTO acknowledged that the affidavit had been filed, and the record was updated to reflect the joint venture’s claim of incontestability pursuant to 15 U.S.C. § 1065. (Once a registrant can demonstrate incontestability of its mark, third parties will be limited in the grounds that they can allege in a petition to cancel the registration.) The City apparently did not become aware of the registration until 2006, and immediately thereafter requested that LeRoy and the joint venture assign all rights in the mark to the City. Id. at 8. LeRoy declined.

In 2007, the joint venture filed a second application for registration of the mark TAVERN ON THE GREEN in connection with “cooking oils, salad dressings and dipping oils.” Although the City requested two extensions of time to oppose this application, registration ultimately issued in September 2008 unopposed (Reg. No. 3,494,658).

The Dispute at Bar

Neither LeRoy nor his estate is individually named as a defendant in this case, but both of his companies are. (Mr. LeRoy apparently passed away in 2001, but his rights in the mark passed to the companies.) The companies (collectively referred to as “Debtors”) sought protection of the bankruptcy court under Section 11 in September 2009, and thereafter initiated an adversary proceeding to obtain a declaration of their exclusive right to use the mark for restaurant services, and to prevent the City from using the name for itself. Id. at 10. In November 2009, the City filed a motion to withdraw the bankruptcy reference, which motion the U.S. District Court for the Southern District of New York granted on December 3, 2009. (ECF Document No. 9).

Both parties filed cross motions for summary judgment. The Debtors sought a declaration that they had the exclusive right to use the mark in connection with restaurant services, and an injunction against the City’s continued use of the mark in commerce. City of New York v. Tavern on the Green, L.P. et al., Nos. 09 Civ. 9224, 09 Civ. 9254, slip op. at 3 (ECF Document No. 40). For its part, the City’s motion for summary judgment sought: 1) a declaration of its prior rights in the mark under New York state law; 2) cancellation of Debtors’ registration based on a “fraud in the procurement” theory; and 3) cancellation of the Debtors’ registration for use of the mark in connection with the various oils. Id.

Cancellation of LeRoy’s Registration in TAVERN ON THE GREEN (Restaurant Services)

Ultimately, the Court granted the City’s motion for summary judgment with respect to the TAVERN ON THE GREEN registration in connection with restaurant services, and ordered that the registration be cancelled based on LeRoy’s commission of fraud in procuring the registration without disclosing the City’s prior rights or the limitations on LeRoy’s own rights as a result of the license agreement. As to the second registration, in connection with various oils, the Court concluded that evidence was not presented sufficient to justify cancellation of this registration, and determined that the motion for summary judgment on this point was “premature.”

In reaching its decision, the Court evaluated the City’s claim of a prior right to the mark TAVERN ON THE GREEN in connection with restaurant services based on New York common law of unfair competition. It explained that “in order to establish a protectable right to a trade name under New York law, the City must proffer undisputed facts that show that the defendants are unfairly attempting to exploit the efforts of another to create goodwill in that trade name.” Id. at 11. The Court concluded that the City indeed had prior rights – predating those of the registrant by 35 years – such that the mark, “‘Tavern on the Green’ was closely associated in the public mind with a building owned by the City and located in New York’s Central Park.” Id. at 13, 14.

The Debtors argued that the repeated closures of the facility for renovation and improvement – particularly the closure in 1973 that coincided with the awarding of the concession lease to LeRoy – constituted a break in the City’s use of the mark, such that it should not be able to claim continuous use since 1934. Id. at 15. The Court disagreed, noting that “[r]enovations usually signify an intention to continue operations, which the 1973 Agreement makes clear by contemplating renovations in the transition from the prior licensee to the Debtors.” Id. Thus, the Debtor’s claim to “incontestibilty” as a result of its 1985 filing with the USPTO was not valid as against the City – because of the City’s prior rights. Id. at 16.

The Court also considered the City’s claim that LeRoy had procured the registration fraudulently when he applied in 1978 for registration of the service mark. After finding that the failure to disclose the license agreement demonstrating that LeRoy’s rights in the mark were limited was a material fact, the Court concluded that “the deliberate omission in a trademark application of information regarding another’s right to use the mark applied for is a material omission justifying cancellation of the mark.” Important to the Court’s consideration was its expectation that trademark applicants owed “uncompromising candor” to the USTPO when they file their applications. Id.

Court’s Dismissal of Debtor’s Laches Defense

In addition to denying the City’s claim for prior rights in the trademark, the Debtors raised a defense of laches, claiming that the City had waited too long to file its claim for cancellation. In dismissing the Debtor’s argument rather summarily, the Court confirmed that the Lanham Act clearly provided for cancellation at any time when the claimant can demonstrate fraudulent procurement. Id. at 20; see 15 U.S.C. § 1064.

Impact on Other Decisions

This opinion serves as a reminder that the declarations required to be signed in connection with trademark applications need to be reviewed carefully before applicants sign them. Not only must an applicant confirm that the descriptions of goods or services associated with the application are accurate (see Medinol and Bose lines of cases, covered in prior blog entries here), but also must confirm that no one else has the right to use the mark in connection with the goods or services identified in the application. Failure to read carefully and affirm the accuracy of the statements made in the application can result in a loss of registration or in a determination that another entity has more senior rights that may override any investment (no matter how significant) the applicant has made in the mark.

USPTO Trademark Public Advisory Committee Meeting Tomorrow

by Christina Frangiosa

On November 20, 2009, the U.S. Patent & Trademark Office’s Trademark Public Advisory Committee will be holding a public meeting to discuss, among other things, the impact that the Federal Circuit’s recent decision in the In re Bose Corp. case will have on the USPTO’s “Trademark Operation.” (More information on the In re Bose Corp. case and some of its predecessors in the Medinol line of cases can be found in my prior blog entries.)

The meeting will be webcast, and runs from 9:00am – 12:00pm Eastern Time. You can also dial in by phone to hear the audio only, if you prefer. (Instructions for participating and the proposed agenda can be found here.)

Based on the published agenda, the segments relevant to the In re Bose opinion will likely be the following:

* 10:15 a.m. (20 minutes) – Discussion with TTAB Judge Gerard Rogers regarding TTAB matters, including “What steps has the TTAB taken, and what steps (if any) does it plan to take, in the wake of the Federal Circuit decision in In re Bose Corp.”

* 10:35 a.m. (60 minutes) – Discussion with Trademarks Commissioner Lynne Beresford about “what steps the Trademark Operation should take, if any, in the wake of the [In re Bose Corp. decision] to minimize the amount of ‘deadwood’ on the trademark registers.” Some of the suggested subtopics in this category are:

“* Should any special action be taken regarding applications claiming a large
number of goods/services?
* Should proof of mark usage be required on each
item of goods/services?
* Should there be a procedure by which a third party
can require an interim proof of use of a mark by a mark registrant on some or
all goods/services covered in a registration?”

Also of interest in this section is the discussion of a proposal to update TMEP (the USPTO’s Trademark Manual of Examining Procedure) on a continuous basis.

If you cannot participate in the meeting, but are interested in reading about it afterward, the transcript will likely be posted on TPAC’s main page at some point after the meeting concludes. Transcripts from prior meetings can also be found there.