The Trademark Modernization Act (TMA)’s New Reexamination Procedure
Alt Legal Team | December 08, 2021
A fundamental principle in US trademark law is that a trademark is granted protection so long as the mark is in use. The trademark register must accurately reflect marks that are in use so that brand owners know the corpus of existing filings and are able to clear and register their marks.
The USPTO has faced a number of recent challenges, including an increase in fraudulent applications, fake specimens, and registrations that are not (and sometimes that were never) in use. To confront these issues and provide better accuracy on the register, the USPTO is enacting the Trademark Modernization Act (TMA) which introduces two new nonuse cancellation procedures – expungement and reexamination. This article will provide an in-depth discussion of the reexamination procedure and help you understand how to incorporate it into your practice.
Check out our related article on expungement procedures.
When to file a Reexamination Proceeding
Reexamination proceedings must be instituted during the first five years after a trademark is registered.
Quantity of Filings and Who May File
At this time, there is no limit on the number of petitions for reexamination of a mark. Additionally, there is no requirement that a petitioner identify the name of the real party in interest on whose behalf the petition is filed. However, the Director may be able to request that information in certain cases.
The fee is set at $400/class, balancing the costs associated with conducting a reexamination proceeding and offering a less expensive alternative than a cancellation proceeding before the TTAB.
Grounds for Reexamination
The reexamination procedure is meant to target registrations where the application was filed under §1 and was not in use on some or all of the goods and services identified in the registration as of the relevant date on the application.
Reexamination Filing Procedure
Step 1: The petition for reexamination must contain the following allegation:
The trademark was not in use in commerce on or in connection with some or all of the goods and/or services listed in the registration on or before the relevant date, which, for any particular goods and/or services, is determined as follows:
- 1(a) application – the application filing date
- 1(b) application – the later of the filing date of the amendment to allege use or the expiration of the deadline to file a statement of use, including all extensions.
Step 2: The petition must be complete, namely, it must be in writing and filed through the USPTO TEAS system, and it must include:
- The required fee ($400/class).
- The US trademark registration number of the registration subject to the petition.
- The basis for the petition under §2.91(a), namely reexamination (if you were filing a expungement petition, you would indicate expungement).
- The name, domicile address, and email address of the petitioner. Note for non-US domiciled petitioners, a designation of a qualified attorney, including the attorney’s name, address, email address, and bar information is required.
- Identification of each good and/or service listed in the registration for which the petitioner requests that the proceeding be instituted.
- A verified statement signed by someone with firsthand knowledge of the facts to be proved that sets forth in numbered paragraphs:
- The elements of the reasonable investigation of nonuse conducted; and
- A concise factual statement of the relevant basis for the petition, including any additional facts that support the allegation of nonuse.
- A clear and legible copy of all documentary evidence supporting a prima facie case of nonuse of the mark in commerce and an itemized index of such evidence.
Step 3: If a petition does not satisfy the above requirements, the USPTO will issue a letter providing the petitioner 30 days to perfect the petition.
What Constitutes a Reasonable Investigation of Nonuse
When providing evidence of nonuse, the petitioner must have performed a reasonable investigation. A single Internet search is insufficient and the petitioner must describe the investigation as performed, namely, the sources searched, when searches were conducted, and what evidence/information was procured.
Appropriate sources for a reasonable investigation include:
- State and Federal trademark records;
- Internet websites and other media likely to or believed to be owned or controlled by the registrant;
- Internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale;
- Print sources and webpages likely to contain reviews or discussions of the relevant goods and/or services;
- Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency;
- The registrant’s marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services; and
- Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant’s use or nonuse of the registered mark.
After the Petition for Reexamination is Filed
Once the petitioner files a Petition for Reexamination, the USPTO will take the following actions:
USPTO uploads petition documents to TSDR.
The USPTO will send a courtesy email to the registrant and their attorney.
Director notifies parties if it decides to institute a proceeding.
The registrant will receive notice via an Office action.
Registrant responds to petition.
The registrant has 3 months to file a response (may request a one-month extension for a fee of $125). The response must provide evidence of use, information, exhibits, and/or declarations to rebut the prima facie case showing nonuse. The response must also identify who is representing the registrant, the registrant’s domicile address, and an email address for electronic correspondence.
The registrant may also respond by deleting some or all of the goods/services listed on the registration. The registrant must pay a fee to delete some or all of the goods/services if they have already filed a §8 or §71 declaration.
The registrant may also submit a request to cancel or amend the registration, but they must also respond to the Office action and notify the USPTO of the separate request.
If the registrant does not respond, the USPTO can terminate the proceeding and cancel the registration in whole or in part. Registrant may petition for revival within 2 months (with actual knowledge) or up to 6 months after cancellation (in extraordinary circumstances.)
USPTO reviews Office action response and takes action.
If the registrant (1) demonstrates sufficient use to rebut the prima facie case or (2) deletes goods/services such that no goods/services remain at issue, the proceeding will be terminated and the USPTO will issue a Notice of Termination.
If the registrant’s response fails to establish use or fails to comply with all requirements, the USPTO will issue a final Office action. The registrant must respond within 3 months with a request for reconsideration or an appeal to TTAB. Deadlines cannot be extended.
Should the registrant fail to respond to the final Office action, the USPTO will issue a Notice of Termination, noting the goods/services where use was not established. The USPTO will also issue an order cancelling the registration in whole or in part.
Upon termination of a reexamination proceeding where it was established that the registered mark was used in commerce on or in connection with any of the goods/services at issue, on or before the relevant date at issue in the proceedings, no further ex parte expungement or reexamination proceedings may be instituted as to those particular goods and/or services.
Once a reexamination proceeding has been instituted for a particular registration and is pending, no later reexamination proceeding may be instituted for that registration with respect to the same goods/services at issue in the pending proceeding. However, if a subsequent proceeding identifies additional goods/services, it may proceed only with respect to the additional, non-identical goods/services.
Suspension Pending Disposition of a Reexamination Proceeding
If the examining attorney has cited a registration in a §2(d) office action that is the subject of a reexamination proceeding, this is considered prima facie, good and sufficient cause for suspension of the application pending disposition of the reexamination proceeding.
Where the examining attorney is ready to issue a nonfinal refusal, and the TSDR shows that a reexamination proceeding was instituted, the examining attorney must issue an Office action addressing all refusals and indicating that upon receipt of a timely response, the application will be suspended pending the reexamination proceeding – whether it is instituted and/or the final determination of the proceeding.
Where the examining attorney is ready to issue a final refusal or denial of a request for reconsideration of a final refusal, the examining attorney must suspend action pending determination of the reexamination proceeding. If the proceeding is not instituted or the proceeding is terminated, the examining attorney will remove the application from suspension and issue a final refusal.