Is Your Brand at Risk? Updates from the Trademark Modernization Act to Better Protect Your Trademark Portfolio
Once a trademark registers, it can often feel as though the last hurdle has been overcome. However, with the Trademark Modernization Act (TMA) that went into effect on December 18, 2021, new ex-parte procedures have been established that can be used to challenge a registered trademark.
Case Study I – Expungement Proceedings
On December 8, 2017, a trademark application for the mark GALAVAVA related to floor coverings was filed based on actual use. By July 10, 2018, the mark was registered on the Principal Register. On December 21, 2021, only days after the TMA went into effect, the registered GALAVAVA mark was called into question using the TMA’s new expungement procedure.
Expungement proceedings can be initiated by a third-party petition, or by the USPTO Director’s initiative, based on information that a registered trademark has never been used in commerce. In the GALAVAVA expungement proceedings, information was submitted alleging that the specimen showing use of the GALAVAVA mark, which was filed with the original application, was a stock photo from Getty Images that had been doctored to include a tag bearing the GALAVAVA mark.
Based on this information, expungement proceedings were instituted, and a Notice was sent to the owner of the GALAVAVA mark seeking evidence of use of the GALAVAVA mark in commerce. To avoid cancellation of the GALAVAVA registration, the applicant would need to provide evidence of use in commerce by a certain date. This date is either before the filing date of the petition to expunge or before the date the Director-initiated proceeding was instituted by the Director. When the applicant did not provide any evidence, the GALAVAVA registration was canceled. Between December 2017 and June 2022, the trademark application was filed, the mark was registered, and the registration was wholly canceled.
Case Study II – Reexamination Proceedings
On February 3, 2020, a trademark application for the mark WATERBIRD (+design) related to distilled spirits and alcoholic cocktails was filed based on actual use. The mark subsequently registered on September 1, 2020, on the Principal Register. On December 31, 2021, shortly after the TMA went into effect, the use of the WATERBIRD mark was called into question using the new reexamination procedures under the TMA.
Reexamination proceedings can be initiated by a third-party petition, or the USPTO Director’s initiative, based on information that the registered mark was not used in commerce for some or all of the goods identified in a registration at certain key dates. For a use-based application, such as the WATERBIRD application, the key date is when the application is filed. For intent-to-use applications, the key date is when evidence of use is submitted. The petitioner in the WATERBIRD reexamination proceedings provided evidence from the registrant’s social media, including podcasts, Instagram, and Facebook. The petitioner believed this information proved that the WATERBIRD mark had not been used in commerce as of February 3, 2020, the key date of when the original WATERBIRD application was filed as an actual-use application.
Based on the petition, reexamination proceedings were instituted and a Notice was sent to the owner of the WATERBIRD registration. To avoid cancellation of the WATERBIRD registration, the owner needed to provide evidence to establish the mark had been used in commerce as of the filing date of the application for all of the goods identified in the registration. The owner filed a response with evidence showing the mark was used in commerce as of February 3, 2020, including declarations, an application to the Department of Treasury for label approval, and multiple photographs from 2019. Based on the evidence, the Trademark Office agreed that the mark was used in commerce when the application was filed and the mark remains a registered mark on the Principal Register. However, the owner had to spend time and money to support its registration to prevent cancelation.
Moving Forward under the TMA
Under both the expungement and reexamination proceedings, any third-party petitioner may request that the USPTO Director institute expungement and reexamination proceedings, and the Director can also directly institute the proceedings. So far, both expungement and reexamination proceedings have been requested by third parties and directly instituted by the Director.
Expungement proceedings can be brought against a registered mark between three and ten years after the registration date of a mark. However, before December 27, 2023, parties can also file expungement proceedings against older registrations, beyond this ten-year limit. Reexamination proceedings must be filed within the first five years after registration of a mark.
Reexamination and expungement proceedings have a lower initial cost than petitions to cancel, which remain an avenue for challenging a trademark registration. The new proceedings are quicker and narrower, however, the initial burden of providing the supporting evidence is higher. Unlike cancelation proceedings, which are more involved for the petitioner, expungement and reexamination proceedings do not involve the petitioner beyond the initial petition. Many of the proceedings appear to have been filed by interested third parties, namely competitors or similarly-named businesses, and they are removed from the process after the petition is filed. This makes the TMA ex-parte proceedings a much more economical avenue to challenge a registration.
Even if your mark has registered, your registration may still be at risk. As shown by the WATERBIRD reexamination, the statements made by the registrant on social media, which were promotions for its product, could be used as evidence for a mark to be called into question. Innocent acts or mistakes can cause time and money to be spent defending your registration, result in some goods or services being canceled from a registration, or result in your entire registration being canceled. It is important to be diligent in the preparation of your trademark applications and the maintenance of your registrations, including having accurate descriptions of goods and services, maintaining proper specimens, ensuring when marks are first used in commerce, and documenting when such first use occurs. A quality paper trail will be your best friend should your registration’s validity be called into question.
If you would like assistance in establishing procedures to better protect your trademark portfolio from these new proceedings, please contact us and we would be happy to help.
This post was authored by Caitlyn Silverblatt, an associate at Price Heneveld LLP. Learn more about Caitlyn’s practice and contact her here.