USPTO Webinar SummaryInsight into TMA Nonuse Cancellation Petitions
Alt Legal Team | March 31, 2022
On March 29, 2022, the USPTO presented a webinar “Insights into Trademark Modernization Act nonuse cancellation petitions.” During this webinar, Amy P. Cotton, Deputy Commissioner for Trademark Examination Policy, provided an update on the new tools established by the Trademark Modernization Act (TMA) to challenge nonuse, expungement and reexamination. She offered some important insights about the procedures and provided tips for filing more successful petitions. This article contains a summary of important points that Amy discussed during her presentation.
Be sure to check out our related article USPTO Update: TMA Expungement and Reexamination Proceedings which describes elements of successfully initiated petitions (as well as mistakes to avoid).
Also, check out the Alt Legal Connect 2021 session, USPTO Updates: USPTO representatives explain recent and upcoming changes, where Amy Cotton and her USPTO colleague Dan Vavonese, discussed the trademark surge at the USPTO as well as the Trademark Modernization Act.
Types of Petitions Received and How they are Managed
Since December 18, 2021, 58 proceedings have been filed (34 expungement and 24 reexamination). Of the expungement proceedings, 18 of the filings pertain to registrations filed under §§44/66 and 16 of the filings pertain to registrations filed under §1(a). There have been 13 instituted proceedings and 10 non-instituted proceedings. There has been 1 Director-initiated proceeding.
To manage the petitions, there is a working group at the USPTO that meets twice a week that includes nine high-level policy and petitions attorneys (Note: the USPTO is referring to those who review TMA petitions as “petitions attorneys” to distinguish them from examining attorneys). The group meets to review and make determinations on each petition. There are six examiners and four policy supervisors as well as others regularly brought in from the solicitor’s office and the TTAB to discuss specific cases or suspension issues. There is a lot of inter-office communication to ensure that cases are handled in a consistent manner.
The USPTO noted that when it makes a determination to not institute a proceeding, it will not provide detailed reasoning as to why it was denied and how the evidence was insufficient. The USPTO explained that the purpose in issuing denials is not to provide a roadmap for correcting the petition and filing an appeal since determinations are final and non-reviewable. The USPTO recommends that petitioners review successfully-initiated proceedings and understand what evidence was submitted. See the section below for more information on how to find TMA proceedings.
The USPTO identified a particular scenario (see the petition for GALAVAVA) that is especially helpful to review – where the Director denied a petition in part with reference to certain goods and instituted a petition in part with reference to certain goods. The Director then conducted additional research and initiated a proceeding (See the second Notice of Institution/Non-Final Action issued on March 14, 2022) in relation to the goods that were excluded from the initial proceeding. Here, the Director essentially filled in the gaps of what evidence was missing in order to initiate a proceeding for expungement against the entire class of goods listed in the registration. However, the USPTO warned that you cannot rely on the USPTO to file Director-initiated proceedings to fill in the gaps on your deficient proceedings; the USPTO simply does not have the resources to save every petition by adding parallel Director-initiated proceedings.
Finding and Reviewing Proceedings on the USPTO Website
Currently, there is no searchable data field in TESS for registrations where a petition for expungement or reexamination has been filed. At this time, the USPTO has created a webpage listing petitions filed, which is updated weekly. The USPTO is working on a new database which will show expungement/reexamination decisions, including the decisions to initiate proceedings and determinations by the examiner. The database will also include administrative sanctions decisions and decisions on petitions to the Director, precedential decisions, and possibly TTAB decisions. The USPTO notes that this database is in development and is slated to be ready in 6+ months, but that the ultimate goal is to increase transparency and to make it easier for users to search for USPTO decisions.
Pre-Filing Considerations: Pending Section 7 Requests to Amend Registrations
Before filing a petition for expungement and reexamination, it is important that petitioners check to see if there is a pending Section 7 request to amend the goods/services listed in the registration, as it could have an impact on the TMA proceeding. The USPTO notes that it has already had a case where a Section 7 request to narrow the goods/services was already pending when a petition for expungement was filed (see the proceedings related to RAZ MOBILITY). Once the TMA examiner realized that the Section 7 request was pending, the USPTO expedited the processing of the Section 7 request and amended the registration. The USPTO ultimately denied the petition for expungement because the registration had been corrected, narrowing the identification of goods and services and mooting the TMA proceeding. Had the petitioner checked for a pending Section 7 request, they could have avoided spending time and money filing the expungement proceeding.
General Tips for a Successful Filing
The USPTO identified four general tips applicable to all petitions:
- If there is an element missing from the petition, the USPTO will consider whether it will issue a 30-day letter, allowing the petitioner time to perfect the petition. The USPTO noted it is most likely to issue a 30-day letter if it is likely to institute the petition, it won’t issue a 30-day letter if it is likely to deny the petition. A 30-day letter is only meant to allow the petitioner to clarify certain items in the petition; it is not an opportunity for the petitioner to submit new evidence.
- You must supply an index with your petition clarifying which piece of evidence speaks to which good/service identified in the petition. If you do not supply an index, you’ll be issued a 30-day letter, delaying the process for considering your petition. The index must be a separate page and link to your evidentiary exhibits.
- Be clear about which goods and services you are challenging and indicate the evidence that supports nonuse relating to a particular good/service (“Exhibit A demonstrates nonuse related to Good A.”) Be sure not to list the entire class of goods or services if you only have evidence which speaks to a single item in the listing of goods/services.
- Once the petition is filed, there is no withdrawal. If a prima facie case has been established, the Director will not withdraw the petition, even if the parties settle. The USPTO has an interest in ensuring that registrations are accurate.
The USPTO recommended that filers refer to the tips and best practices listed on USPTO’s TMA page (expand the “Limitations of proceedings” and “Best practices” sections.) In addition, the USPTO specifically identified a few notable tips in terms of things to START and STOP doing:
- START giving an index of the evidence. Make it a separate page and label evidence in the petition and match it to the evidence.
- START providing documentary evidence for each search you do, even if it is a negative search. Show the NULL search results.
- STOP shrinking website evidence so it is illegible. Include legible URLs and dates of access.
- STOP providing only evidence of current nonuse.
- STOP providing evidence of one bad specimen to challenge the entire class, you’ll need more than that.
- STOP referencing other registrations of registrant without providing relevant portions of the record.
- STOP providing entire records of other proceedings. Specifically provide what you want the USPTO to look at.
Tips for Conducting and Describing a Reasonable Investigation
Do not only provide testimonial evidence: Provide evidence of results of the investigation and be sure that the evidence isn’t just testimonial. You must provide the documentary evidence to corroborate the testimonial evidence. It is not enough to just say, “I didn’t find anything.” You need to provide evidence showing that the searches yielded nothing. For example, you can provide screenshots showing searches on Amazon, Target, Walmart, etc. showing zero hits, or screenshots on Wayback Machine showing no past use and indicate the time period covered.
Design marks: The USPTO recommended that for design marks, you should conduct a reverse image search and provide the results. A search of the company name is not adequate.
Current nonuse can bolster a prima facie case: While current nonuse alone is inadequate to establish a prima facie case for expungement or reexamination, it is still valid and important evidence to provide. Current nonuse can be used as part of the larger body of evidence as examiners make a determination on the proceeding.
Bad/fake specimens: Where a petitioner submits evidence showing a false or digitally-altered specimen, it can serve as prima facie evidence of nonuse as of the relevant date. It’s important to note that the specimen is sufficient to show nonuse for the particular good shown in the specimen, or goods covered by the specimen. However, the bad/fake specimen is not sufficient to show a presumption of nonuse in the entire class of goods or services. While the USPTO acknowledges that a single specimen may have been submitted as representative of use for the entire class of goods/services in the registration, the USPTO cannot institute proceedings on the entire class based on the bad specimen.
If you want to challenge the entire class of goods/services based on the bad/fake specimen, you should supply the following evidence:
- Evidence of current nonuse
- Lack of US presence of the owner
- Lack of internet presence of owner or mark
As a whole, this evidence, along with the bad/fake specimen may be sufficient to challenge the entire class of goods/services by raising the inference that there is nonuse on all of the goods/services.
Unexpected Uses for TMA Proceedings
The USPTO has received a few TMA petitions that raise interesting arguments for nonuse. The USPTO acknowledged that these particular arguments were not specifically outlined by the TMA, but are nevertheless within the scope of the statute, and the USPTO is glad to hear these cases.
Petition alleging nonuse in interstate commerce (see petition for reexamination re: WATERBIRD)
The petitioner established that while there was use in intrastate commerce, there was no use in interstate commerce. Check out our article about TMA proceedings where we wrote about this petition in detail.
Original specimen did not show use in commerce for specific goods (see petition for expungement re: SURFSTAR WAKE & Design)
The original examining attorney missed that the specimen did not match the ID, relating to a highly-specific boat part. Now, the USPTO has the opportunity to fix these mistakes using reexamination. Check out our article about TMA proceedings where we wrote about this petition in detail.
Original specimen submitted identified a website that never existed (see petition for reexamination re: $COIN)
Again, the USPTO will use these proceedings as an opportunity to review defects in the original application to examine whether a prima facie case for the goods and services that the specimen that was initially meant to support.