More on the USPTO’s New Expungement and Reexamination Proceedings

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 timeFlexible Response Times and Expiration of Recognition of Attorney Representation Following Registration

TTAB Refused Registration for Commonplace Phrase That Fails to Function as a Trademark

In order for a word, phrase or other device to operate as a trademark, it must convey to purchasers or potential purchasers a single source of the goods or services in connection with which the mark is used – or, simply put, it must be a “source indicator” for those goods and services.  This is true whether the trademark owner seeks to simply use a mark at common law or to apply for registration of the mark with the U.S. Patent and Trademark Office (“USPTO”).

In a recent decision, the USPTO’s Trademark Trial and Appeal Board (“TTAB” or “Board”) affirmed the Trademark Office Examining Attorney’s refusal to register the mark DESIGNED, SOURCED, AND BUILT IN THE USA in connection with the following goods:

Class 1:  “a wide variety of chemicals for a wide variety of industrial uses”;

Class 5:  “Hand-sanitizing preparations; disinfectants”;

Class 10:  “Face masks for use by health care providers; surgical masks; human face protectors, namely, transparent face shields for use in the medical and dental fields; sanitary masks for medical wellness purposes; respiratory masks for medical purposes; masks for use by medical personnel”; and

Class 20:  “Freestanding sneeze guards, namely, plastic shields for protection between retail clerks and customers; plastic shields to isolate retail clerks from customers; plastic shields to guard retail clerks against sneezes and coughs of customers; plastic dividers for protection between retail cashiers and customers”.

In re NuGeneration Technologies, LLC, 10 TTABVUE, Ser. No. 88852858, 88866690 (TTAB Apr. 7, 2022) (non-precedential) (appeal consolidated under Ser. No. 88852858); see also application file histories at Ser. Nos. 88/852,858 (Classes 1 and 5, filed March 30, 2020) and 88/866,690 (Classes 10 and 20, filed April 9, 2020).  Both applications were filed on an “intent to use” basis, but Applicant did not submit evidence of any use in commerce for either application.

The Examining Attorney essentially refused registration of the mark DESIGNED, SOURCED, AND BUILT IN THE USA on the grounds that it failed to function as a trademark – in particular because “the wording is merely informational and constitutes a commonplace phrase that is widely used in the marketplace.”  10 TTABVUE 2 (Ser. No. 88/852,858).

In affirming the refusal to register the mark, the Board agreed with the Examiner that the phrase simply conveyed “information to the consumer to support American made goods and services” that also “taps into the American consumer’s desire to purchase products of higher quality and better design, that are durable and sourced locally, ensuring safety & quality at every step of the supply chain.”  Id. at 16-17.

The Board disagreed with the Applicant’s position that the Examiner’s evidence of common usage of separate components of the mark (e.g., “designed in the USA” and “sourced in the USA”) was insufficient to show that the longer phrase, DESIGNED, SOURCED AND BUILT IN THE USA was in “widespread use.” Id. at 14.  In so doing, the Board explained that the evidence of use of these components, spanning multiple industries in connection with varied products, was “sufficient to show a marketing environment where consumers are accustomed to the use of these similar informational phrases by businesses.”  Id.

By way of comparison, the Board pointed to other marks that had been refused registration as commonly-used phrases in business that convey support for an American ideal – and do not operate as an indication of a single source of specific goods or services:

  • GOD BLESS THE USA – Ser. No. 87/168,719 (In re Lee Greenwood, 2020 USPQ2d 11439, at *3 (TTAB 2020) (considered simply an “expression of patriotism, affection, or affiliation” with the US))
  • INVESTING IN AMERICAN JOBS – Ser. No. 86/261,962 (In re Wal-Mart Stores, Inc., 129 USPQ2d 1148, 1156 (TTAB 2019))
  • PROUDLY MADE IN THE USA, Ser. No. 74/375,437 (In re Remington Prods., 3 USPQ2d 1714, 1715 (TTAB 1987)) *Westlaw account required to access this decision.

Interestingly, the Board relied on the analysis in the 1987 Remington decision for the proposition that, “[i]t is common knowledge that today’s American marketplace has a surplus of foreign-made goods and that American manufacturers are anxious to encourage purchasers to give preference to American products.”  Id. at 16 (quoting In re Remington Prods., at 1715).  Despite the passage of 35 years, this marketplace reality remains the same today.

Refusal to register the phrase DESIGNED, SOURCED AND BUILT IN THE USA was affirmed as “merely informational matter” that would not be perceived “as a source of Applicant’s goods.”  Id. at 17.  Essentially, the Board concluded that this phrase failed to function as a trademark that would allow the “relevant public, i.e., purchasers or potential purchasers of Applicant’s goods” to perceive the phrase as “identifying the source or origin of Applicant’s goods.”  See id. at 5.

Recommended Additional Reading:

  • USPTO’s Trademark Manual of Examining Procedure (TMEP) § 904.07(b) (Whether the Specimen Shows the Applied-for Mark Functioning as a Mark)
  • TMEP § 1202.04 (Informational Matter)
  • TMEP § 1202.17(c) (Failure to Function)
  • TMEP § 1301.02(a) (Matter that Does Not Function as a Service Mark)

Common Questions: What Kind of IP Protection Should I Pursue?

We frequently receive questions from business owners asking for intellectual property (“IP”) advice that combine legally unrelated terms, such as asking whether they should “copyright their logo”, or “trademark their idea”, or “get a patent on their design”.*  While it’s possible for IP owners to “layer” their protection – in other words, the same design might be protected under copyright and trademark law, and the same product configuration might be subject to a design patent as well as copyright and/or trademark protection – in many cases, a rights holder may only be exploring one kind of IP protection at a given time. This post is intended to simply define basic terms (particularly under U.S. law) to help foster conversations regarding obtaining the right protections for your IP – but if you need specific advice about what kinds of IP rights apply to your specific circumstances, you should talk with a lawyer who has experience in this area.

* Note that in some circumstances, it is possible to obtain a design patent – so asking to “patent a design” does not necessarily lead to an impossibility or a mismatch between the type of work and the applicable law. However, a mismatch occurs when the question asks whether unique artwork could be patented – where the questioner was really asking about obtaining a utility patent to protect an artistic work that has no functional elements. Continue reading

Trademark Modernization Act Signed Into Law

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 – seeUSPTO’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 – seeUSPTO 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.   

New Trademark Fees in Effect on Jan. 2, 2021

On January 2, 2021, the USPTO’s new trademark filing fees went into effect, applicable to trademark application prosecution matters, as well as proceedings before the Trademark Trial and Appeal Board. See prior post, entitled “USPTO Issues Notice of Proposed Rulemaking on Revised Trademark Filing Fees,” Privacy and IP Law Blog (June 19, 2020).

Among the notable changes (for electronic filing only*) are the following:

Application Filing Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
TEAS Standard Application, per class $ 275 $ 350
TEAS Plus Application (37 C.F.R. §2.22), per class $ 225 $ 250
Application under the Madrid Protocol [15 U.S.C. § 1141f, or “Section 66(a) of the Act”], per class $ 400 $ 500

Maintenance Filing Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
§ 8 or § 71 declaration (through TEAS), per class $ 125 $ 225
[NEW] Deleting Goods or Services [or classes] from a registration after submitting a § 8 or § 71 declaration, but before the declaration has been accepted [filing through TEAS, per class] N/A $ 250
[NEW] § 7 amendment before filing a § 8 or § 71 declaration, and only deleting goods, services or classes N/A $ 0 fee
§ 7 Amendment (at any time – for any reason other than simply deleting goods or services or classes) $ 100 $ 100

Trademark Trial and Appeal Board Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
Initial 30-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 0 $ 0
Initial 90-day or the Second 60-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 100 $ 200
Final 60-day Request for Extension of Time to File a Notice of Opposition, through ESTAA, per class $ 200 $ 400
Notice of Opposition through ESTTA, per class $ 400 $ 600
Petition for Cancellation through ESTTA, per class $ 400 $ 600
Ex Parte Appeal to the TTAB through ESTTA, per class $ 200 $ 225
[NEW] Filing a Brief in an Ex Parte Appeal to the TTAB through ESTTA, per class N/A $ 200
[NEW] Initial Request for Extension of Time to File an Appeal Brief in ex parte appeal cases, per class N/A $ 0
[NEW] Second and Subsequent Requests for Extension of Time to File an Appeal Brief in ex parte appeal cases, per class N/A $200
[NEW] Requests for oral hearings, per proceeding N/A $ 500

Miscellaneous Fees

Description Prior Fees New Fees (eff. Jan. 2, 2021)
Petition to the Director under 37 C.F.R. § 2.146 or § 2.147 $ 100 $ 250
[NEW] Petition to the Director under 37 C.F.R. § 2.66 (to revive an abandoned application) N/A $ 150
[NEW] Letter of Protest under 37 C.F.R. § 2.149, per subject application N/A $ 50

* Technically, there are still fees posted for paper filings, but given that the USPTO now mandates electronic filing in all instances (see prior posts), there will only be very narrow instances where these might apply. In the interests of brevity for purposes of this post, we have omitted the paper-filing fees in the charts above. If these are relevant to your situation, you can find the comparison here: https://www.uspto.gov/sites/default/files/documents/Trademark-Fees-Current-Final-Unit-Cost-2020.xlsx.

Note also that the list above is not a comprehensive recitation of all of the applicable filing fees for trademark filings with the USPTO or proceedings before the Trademark Trial and Appeal Board. For a complete list, see the USPTO’s Current Trademark Fee Table.

Sources for Additional Information: