New Trademark Rules Pursue Unused Marks

Overview


New USPTO rules introduced through the Trademark Modernization Act introduce important changes to U.S. trademark practice. They focus on enhancing the accuracy of the trademark register. Audits have revealed that many registrations fail to show use. The new rules aim to ensure accurate trademark records.

Trademark Modernization Act of 2020

• Amended the Lanham Act to address unused marks.

• Introduced expungement and reexamination proceedings.

• Aims to eliminate “dead wood” and maintain trademark register integrity.

  
  

New Ex Parte Proceedings

• Expungement: Challenges if a mark was ever used in commerce.

• Reexamination: Evaluates if a mark was in use on a key date.

• Available to USPTO and third parties within specified timeframes.

  
  

Filing Requirements

• Verified statement of reasonable investigation needed.

• Investigation must cover past usage and include detailed methods and findings.

  
  

Examples of Investigation Sources

• State and federal trademark records.

• Relevant internet media and reviews.

• Records of business registration or regulatory filings.

  
  

Petition Timing and Limits

• Expungement can be filed 3–10 years post-registration.

• Reexamination must be filed within 5 years.

• USPTO must find a prima facie case before proceeding.

  
  

Petition Requirements

• Any party can file without standing disclosure.

• Must specify the mark and claim of nonuse.

• $400 fee per class; registrant responds after USPTO initiates proceedings.

  
  

Procedures and Outcomes

• Initiated via office action; registrant must prove use.

• Failure to respond may lead to cancellation of goods/services.

  
  

New Nonuse Ground for Cancellation

• Petitioner can claim a mark has never been used.

• Available after three years from registration date.

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Appeals and Concerns

• Final actions can be appealed within three months.

• No repeat proceedings for same goods/services.