Good afternoon, thank you all for
attending today's roundtable on
the Trademark Modernization Act.
Notice of proposed rulemaking.
This roundtable is being recorded and
will be made available for viewing on the
USPTO website within two to three weeks.
If you encounter any technical
difficulties during the Roundtable,
please email virtual events
at uspto.gov for assistance.
If you have questions for the panel,
please send an email to
tm_webinar@uspto.gov.
The panel will answer as many questions
as possible during today's session.
Now I will turn it over to the
Commissioner for trademarks.
David Gooder to provide opening
remarks Commissioner Gooder.
Thanks,
Tasha good afternoon everyone in a few
minutes you'll be hearing from Amy Cotton,
the deputy Commissioner for trademark
examination policy here at the USPTO.
Amy is going to take you through the
proposed rules to implement the Trademark
Modernization Act of 2020 before she does so.
However, I wanted to share with you
a couple of thoughts about the TMA.
If you haven't already heard,
you will shortly.
This year marks the 75th anniversary
of the enactment of the Lanham Act.
Our trademark laws did the test of
time an important amendments over the
years have been few but significant,
such as the case with the TMA.
When the Lanham Act was passed,
the world was a very different place
and the challenges we face today
with regard to the integrity of
our register and its registrations
simply wasn't part of the landscape.
The TMA though,
is come along at an opportune
time and and implementing it
We wanted to do two things differently
than we've done in the past.
First,
we sought comments from stakeholders
and our customers on their initial
thoughts about implementation.
This is before we wrote and published
the draft so that we could include
many of these comments in the draft.
Second,
we included in this draft a number of
options for some of the rules and procedures.
Our thought was that by doing this,
we will be able to receive productive
comments in areas where more than
one good option is possible.
In this way,
when the final rule is published.
We will be confident that the rules
have been well thought through,
effective,
and generally supported by the TM community.
As I prepared my remarks today,
my thoughts turned to the protection
of our trademark register,
which is one of the bedrocks
of our trademark ecosystem.
Quite simply,
the integrity of our register ensures
that brand owners are able to protect
their intellectual property and succeed
in both the US and global markets.
It's for this reason that protecting
the integrity of the US trademark
register is an will remain for some time.
One of our top priorities.
And in that vein,
we welcome the Trademark Modernization
Act as we believe it will contribute in
a significant way towards that goal.
So enough from me.
Without further ado,
I want to pass the mic over to Amy Cotton,
Amy.
Thanks Dave, good afternoon
ladies and gentlemen.
Delighted to be here with you again
today as I was back in March when
we started this process of trying
to figure out how to implement
the Trademark Modernization Act.
I'm here today alongside my
distinguished colleagues to share
our plans for implementation.
I have of course, Commissioner gooder.
I've got Chief Judge Drudge Rogers
with me and also Robert Lavash senior
trademark legal policy advisor to
help answer your questions today
then notice of Proposed rulemaking.
I'm going to call it the the NPRM.
So if I refer to the NPRM, that's
that the notice of proposed rule making.
It's the rule package,
the the the NPRM issued on May 18th we were
happy to be a little bit ahead of schedule.
The comment period is 60 days.
That means that your written
formal comments are due to
theregulations.gov portal by July 19th.
Again,
your comments are due by July 19th.
They must be submitted to
theregulations.gov portal in order to be
included in the records of the formal.
Rulemaking process.
The NPRM contains proposals that
amend the existing letter of protest
rule to indicate that letter protest
determinations are final and non
reviewable established Flexibel
Office Action response periods it
establish is ex parte expungement
and reexamination proceedings for
cancellation of a registration
when the required use in commerce
of the registered mark has not
been made provide for new non use
ground for cancellation before the
trademark trial and Appeal board.
There will package also sets
fees for petition requesting.
Institution of ex.
Parte expungement,
reexamination proceedings and
fees for request to extend
office action response deadlines.
The rule package also has amendments
for suspension of USPTO proceedings
and the rules governing attorney
recognition in trademark matters,
and finally,
a new rule is proposed to address
procedures regarding court orders
canceling affected registrations.
All rules in the NPRM subject to
change based on the formal comments
received that you will send us these
rules will not take effect until the
date that's indicated in the final
rule for expungement reexamination.
Though implementation is required
by December 27th, 2021.
For flexible response periods,
the TMA does not dictate a date of
implementation and the USPTO has proposed
in the rule package that it actually
be delayed six months to June 27,
2022.
That will help your docketing system an Rs.
Any input we received today via
email or through the folks providing
comments or questions on line is
considered informal and will not
form part of the formal rulemaking
record unless those comments
are also submitted in writing
to federalregulations.gov,
starting with letters of protest.
You may remember the USPTO issued
rules formalized formalizing the letter
of protest procedures consistent with
the tma at the end of last year.
Now we're just tweaking Rule 2.149 to
mirror the statutory language that any
determination by the USPTO director,
whether to include letter protest
evidence in the record of
an application shall be final and non
reviewable and that such determination
shall not prejudice any parties right to
to raise that issue or rely on
that evidence in any other proceeding.
I would note because I've gotten questions
on this point that codifying the existing
letter protest procedure is not resulted
in any changes to the practices that
have been in place for many years,
except for two things.
One, there's now a fee of $50.00 for a
letter of protest to cover our costs,
and also we now have two months in
which to make a determination on
whether to send the evidence submitted
by the protester to the examining
attorney for consideration.
But those are the only two changes
that this rule packaged makes.
Next I wanted to move on to this
to the second big bucket in the
TMA flexibel response period.
I wanted to point out that the NPRM
presents one option in the rule text,
but offers two other options
on which we also see comments.
All options would apply to response
periods in examination as well
as in post registration.
However,
the shortened response period
would not apply to section 66.
A Madrid applications. the various
treaty provisions and procedures in
the Madrid system for the International
registration of marks at the World
Intellectual Property Organization
would make it very difficult
for international applicants and
registrants to meet any of those.
Shorten response deadlines in
the United States.
So we just carved those out so
we have three options.
As I said, option one,
three months response period,
we're proposing a standard three months
response period for all office actions,
extendable one time to the full six months.
We're proposing an extension
fee of $125 per request.
This is not a per class fee,
but a per request fee.
Our original thinking was that we
might wish to propose a short period
for only those responses to office
actions that contain simple requirements.
However,
it became pretty difficult to
distinguish which office actions
would be considered simple and which
would be more complex without leaving
it up to an individual examining
attorney on a case by case basis.
So a bright line rule seemed easier
for everyone's docketing system and
consistent with the intent of the TMA.
And we have reflected this proposal
in the Imperium real text.
Option two is the two phase examination.
This is explained in the explanatory
part of the team made the rule package,
and it proposes two separate response
periods that could form the basis for
implementing a two phase examination system.
The first stage phase would be for a
formalities examination featuring A 2
month response period under the TMA,
though this would have to be
extendable up to the full six months,
two months by two months upon
request and payment of the fee.
The second phase of examination would be
for substantive issues and that would
have a three month response period.
Also extendable up to the full six months,
but if you do the math you realize
that this option actually could result
in a total increase inpendency
for a particular application of
all the extensions were pursued,
but we are looking at ways to
enhance examination flexibility
to handle formalities,
issue 1st and then handle
substantive examination separately
in a second office action.
The third option is the patent model.
It's also contained in the
explanatory section of the NPRM.
The initial response period in
every case would be two months,
but it could be extended in
increments up to the full six months.
The applicant would have to
file an extension request in a
fee within the response period,
and the extension fees would get
progressively higher as the applicant
requests more time to respond.
So for example,
an extension fee could be $50
to request the third month,
75 for the 4th month,
125 for the 5th month,
and 150 when the full six months
is requested.
Now the application would be
abandoned if the deadline is missed
without an extension request,
but of course to revive.
The petitioner must include the
applicable extension fee depending
on when the petition is filed
after the initial miss deadline.
So we're looking for comments on
which of these three options would be
most useful to you and to the USPTO,
or if you have further options
that you're interested in,
you can submit those in your
comments as well.
Now we're going to move on to
the third big bucket in the TMA,
which is the non use cancellation mechanisms.
The proposed that we may propose new
proceedings to cancel registrations
for non use and we are proposing the
procedures that would implement those
the first proceeding is expungement.
The target of these proceedings is a
mark in a section 144 or 66 registration.
So that's a use based a Paris based or
Madrid based registration that is never
been used on some or all of the goods or
services identifying the registration.
The petition to request institution of
expungement proceedings may be filed
in the window of time between year
three and year 10. Post registration.
The TMA also provides that expungement
is a new ground for cancellation at
the trademark trial and Appeal Board.
However, the timing is a bit different
for a TTAB claim.
The claim is available at anytime after
the first three years post registration.
It does not cutoff at year 10 like
the proceedings before the director.
You can bring those claims at
anytime after three years.
Please note that this new claim of
expungement does not affect any other
already available non use claim at the TTAB.
That is abandonment or non use.
Nor does it impact the timing
of those claims.
A further point on the timing of expungement
petitions TMA also provides it for
the two years following implementation.
A petition for expungement may be
filed against the registration
that's over 10 years old.
The intent of this provision was
to allow for clearance of older
Deadwood off the register for a two
year period following implementation,
but it is a short window in which
any registration may be subject to
a proceeding for expungement before
the director.
Now the second new type of proceeding
is called REexamination.
The target of these proceedings
is a mark in a Section 1 use based
registration that was not in use
as of the relevant date.
Now what's the relevant date for a
Section 1A application filing date?
Presuming that it was never amended
to a section 1B filing basis.
The relevant date for purposes of
a intent to use a 1B application
is a later of the filing date of
the amendment to allege use or the
expiration of time to file the
statement of use. Now the timing.
The window here petition to request
institution of reexamination.
It must be filed in the first
five years after registration.
For both expungement, and reexamination.
Once the window for requesting
proceedings is closed,
depending on which one you're looking at,
these tools are no longer available
before the director.
However,
any interested party can always bring a
claim at the TTAB or Federal District Court.
For non use.
Our abandonment or expungement
is appropriate.
Alright,
the NPRM lays out the matching
procedures that will be followed in both
expungement and reexamination proceedings.
Now we are proposing a $600
per class petition fee.
The fee is designed to strike the
balance between cost recovery and
providing a less expensive alternative
to a contested TTAB proceeding.
Now any person may file a petition
requesting that either expungement or
examination proceedings be instituted.
Only one registration per
petition will be allowed.
The basis for the petition must either
be expungement or re examination,
but not both in the same petition.
Combining them into one petition,
creates IT difficulties and could
be problematic for examination
because the evidence for the
different bases will be different.
So, but even if a petition for
expungement and participation
for reexamination on the same
registration were filed separately,
the director can consolidate
review of the multiple petitions
against the same registration.
Now the TMA TMA says any person can
file so the statute itself makes clear
that there should be no standing
requirement for the petitioner.
The petitioner is not anonymous
because the petition must be filed
through Tees and that means that it
must be filed through uspto.gov account.
Also,
the petitioner must provide a domicile
address so that we can determine if
the petitioner is foreign domiciled
and thus would need to include the
designation of a US attorney in the petition.
If an attorney is designated,
the petition must include the attorney name,
postal address, email address,
and bar information.
Now,
if a petition is filed but it's incomplete.
The USPTO may issue a 30 day letter
to address the missing information.
Now I wanted to circle back to the
anonymity question that I do get a lot.
I wanted to note the USPTO is
not currently proposing that the
petitioner be required to identify
the real party in interest.
Now we're doing this for two reasons.
1st,
If the petitioner establish is a
prime official case of non use.
It makes no difference for purposes
of adhering to the intent of the TMA,
who that petitioner is,
or whom he or she is representing.
The ultimate goal of the proceedings
is to clear Deadwood from the Register,
regardless of who requested those
proceedings.
Secondly,
once the petitioner filed the petition,
the petitioner is out of the process.
To hold the hold the
petitioner accountable in the context
of these proceedings for failing to
provide accurate information as to
the real party in interest would
require the petitioner to remain a
party to the proceeding throughout,
but that was not the intent of the TMA.
Instead,
we believe that a petitioner who
uses the proceedings to harass
registrants could be sanctioned
outside the context of the proceedings.
That is,
through the sanction authority of
the Commissioner for trademarks.
The Commissioner for trademarks may
sanction individuals making submissions
to the USPTO TL for improper purpose.
So if the USPTO or to discover
through our ongoing investigations
for fraudulent and bad face
submissions that a petition was
abusing these proceedings,
the USPTO could preclude submissions
in any proceeding before the USPTO
by the petitioner in the party
The petitioner may be representing
and could terminate anyuspto.gov
account created by that bad actor.
As an example of the ethical duty
of candor that applies to any party
practicing before the USPTO would be
violated and subject to sanctions if
the petitioner did not disclose all
material facts known that would enable
the office to make an informed decision
whether or not the facts were adverse.
This would of course include situations where
the petitioner knew that a mark was in use,
but the petition alleges that it was not.
Now, once it's complete petition is filed.
We're going to send a courtesy
email notice of the filing.
To the registrar tan the
registrants attorney of record,
as appropriate.
The petition and evidence will also be
uploaded immediately into the trademark
status and document retrieval T SDR system,
and they will be made public.
No response from the registrant to the
filing of the petition will be accepted
and less and until proceedings are instituted.
Now the petition must include a verified
statement that identifies the elements of
the petitioners investigation of nonuse.
Where did you search?
How did you search?
When did you search and what did you find
as to each source of information relied on?
Now the reasonable of the search and the
number and the nature of the sources.
The petitioner must search will
be determined case by case.
The evidence of non use that thought
will necessarily differ depending on
the nature of the goods in the services.
At issue an,
their relevant channels of trade
and advertising.
The sources must be reasonably accessible,
and ones that can be publicly disclosed.
Appropriate sources of evidence
and information for reasonable
investigation may include,
but are not limited to, those you see here.
State and federal trademark records,
Internet websites,
and other media likely to or believed to
be owned or controlled by the registrant.
Internet web sites on other online
media and publications where the
relevant goods and services would likely
be advertised or offered for sale.
Print sources and webpage is likely
to contain reviews or discussions
of the relevant goods and services.
Records are filing made with or of
actions taken by any state or federal
business registration or Regulatory agency.
The registrants marketplace activities,
including,
for example,
any attempts to contact the registrar
or purchase the relevant goods or services,
records of litigation or administrative
proceedings reasonably likely to
contain evidence on the registrants.
Use or non use of the registered
mark and of course,
any other reasonably accessible
source with information establishing
that the mark was never in used in
commerce for expungement or was
not in commerce as of the relevant
date reexamination or on or on or
in connection with the relevant
goods and services.
Now the director is the gatekeeper to
the process and decides whether the
prima facie case is made based on
the evidence and available evidence
and information in the petition.
And also the USPTO electronic
record of the involved
registration. The director has the
authority to institute a proceeding
without a petition if the director has
evidence establishing a prima facie case.
So there's petition based and there's
director initiated proceedings.
So, for example,
the director could institute a
proceeding on different goods and
services in the same registration
that's already the subject of a
petition initiated proceeding.
Of course, the director can consolidate
review of both proceedings in
that's on that same registration.
The consolidated proceedings are related
parallel proceedings that may include both
expungement in re examination grounds.
Now a prima facie case requires
only that a reasonable predicate
concerning nonuse be established.
If a prima facie case is established,
the director must institute
proceedings and if proceedings are
instituted just as an examination,
the burden of proving non used by
proponents of the above evidence
lies with the director.
If a prima facie case is not
established in the petition itself,
the director will not institute
petition based proceedings.
The director will not add evidence to a
deficient position petition to establish
a Primefaces case and institute proceedings.
But however,
director,
if the director has his own
evidence and establish,
is a prima facie case.
The director can institute proceedings on
his own initiative without that petition.
Once proceedings are instituted,
an office action will issue that
directs the registrant to respond
within two months with proof of
use of the mark on the challenge,
goods or services.
The director's decision to institute
proceedings based on a prima facie
case is final and non reviewable.
With two months to respond,
the registrant is subject to the USPS
rules on electronic correspondence.
The requirement to correspond
electronically with the office
domicile address and representation
by US Council of Foreign Domiciled.
The registrar has three options
for his or her response.
Number one,
provide evidence of use #2 excusable
non use in certain circumstances and
or three deletion is the third option.
Starting with providing evidence of use.
The registrant must provide such
evidence of use, information,
exhibits, affidavits,
or declarations that may be necessary
to rebut the prima facie case by
a stablishing that the required use
in commerce has been made honoring
connection with the goods and services
at issue is required by the Lanham Act.
Any documented,
sorry?
Any documentary evidence of use need not
be specimens of use in section 18 they act,
but they must be consistent with
the definition of use in commerce
in section 45 in Lanham Act.
Specimens are typically what
will be provided,
but there may be situations where where
the specimens are no longer available,
and in these cases the registrant
can provide additional evidence and
explanations supported by declaration.
Resubmitting this same exact
specimens already contained in the
USPTO TRS records without additional
evidence will likely be insufficient
to rebut the prima facie case.
Keep in mind that the office already
reviewed the USPS records to determine
whether to institute proceedings.
Testimonial evidence may be submitted,
but should be supported by
corroborating documentary evidence.
For expungement,
the proof of use must show that
the use of curd before the filing
date of the petition.
For re examination.
The proof of use must show that the use
of curd on or before the relevant date.
Now on the second option for response,
excusable nonuse.
This only applies to section 44,
Paris or section 66 registrants.
In the context of an expungement proceeding.
Excusable Nonuse is a treaty entitlement
for Paris and Madrid restaurants,
and does not apply to Section 1 registrants.
It only it only applies an
expungement because section 44
and 66 registrants did not have
to establish use in examination
as a condition for registration
that would now be questioned
in a reexamination proceeding.
The third response option is deletion.
A registrant may delete some or all
of the challenge goods and services in
his response with immediate effect.
A registrant may not amend an identification
in the context of these proceedings.
Actually we received a question ahead
of time about whether any regulatory
allowances would be made for registrants
and expungement or reexamination proceeding
who are affected by a mistake made by
counsel in the initial application when
identifying the goods and services.
So a fact pattern where this might be
an issue is if the proof of use offered
does not match the identification of
goods and services being challenged,
maybe because the applicant initially
made the mistake in identifying the
goods and services in his application
or the attorney did so.
And they never fixed that mistake.
Again, the registrant may not amend
the ID to match the proof of use
in the context of these expungement
reexamination proceedings.
Remember,
these are supposed to be short proceedings,
so we can't have a lot of additional
issues added.
However, there is a way forward here.
The registrant could file a section
seven amendment to narrow the ID
within the scope of the original
ID and notified that amendment to
the expungement or re examination
examiner for consideration.
If the register.
If the restaurant did not already
do so prior to the proceedings.
However,
keep in mind that we cannot
guarantee that the section Seven
amendment would be accepted.
We would not suspend the expungement
reexamination proceedings while the
Section 7 examination was going on.
But we will expedite consideration
of the Section 7.
Remember,
we want to keep these proceedings fast,
efficient and low cost.
So I hope that answers the question
that was posed prior to this roundtable.
If the registrant's response proposals
deletion but this deletion occurs
while the registration is also subject
to a post registration examination
of the Section 8 or 71 declaration,
a deletion fee of $250 per class will be due.
I want to note specifically that we
are not proposing to charge a deletion
fee in the context of the expungement
or reexamination proceedings.
But if the deletion in there in
the registrar's response occurs at
the same time that the maintenance
filing is being examined,
then we will charge the deletion fee.
I know that's a little confusing,
but you can understand that we want.
We don't want folks to avoid the
post registration deletion fee
simply because there's the subject
of an expungement or reexamination
proceeding at the same time.
So deletion can occur in
the registrar's response,
but a registrant may also delete goods and
services through a section seven amendment.
The section Seven amendment must be
notified by the registrant in his
or her response to the expungement
or re examination.
Examiner said that they know
that it was made.
Also,
a registrant may delete goods
and services just by voluntarily
surrendering the entire registration.
This surrender must also be
notified to the expungement or
examination examiner in the registrar's
response for that response to be acceptable.
Now, ultimately, if one of these
three responses is acceptable.
The proceedings terminate immediately
and no cancellation order issues.
No response by the registrar means immediate
cancellation for the goods and services
on which the proceeding was instituted.
Now a petition for reinstatement is
available if the failure to respond
was due to extraordinary circumstances
and the typical time periods for
filing a petition supply.
Now, if you are filing the petition
to reinstate the response to the
outstanding office action would
also be required at that time,
along with the petition and the fee.
This project,
this process should not be used to prolong
the registrant's overall response period.
The MPR M adjust the due diligence
monitoring rules such that registrants
must monitor the status of their
registration at least every two months
after notice of Institution of proceedings.
Now if the response is
unacceptable or it's incomplete,
a final action issues with
a 2 month response period.
Now, actually,
we've asked for comments the in
the Imperium on whether we should
issue a 30 day letter for a timely
bona fide attempted response
to the first office action,
but which omits some matter of compliance,
so we'd like to hear your views on that.
But I wanted to go back to the
issue of deletions and flag two
issues for consideration as you
prepare your formal comments.
The MPR EM request comments on whether
a registrant who fails to respond to the
First Office action should have his or
her registration flagged for later audit.
Post registration audit.
This means that from a best practices
perspective not responding to
an office action and just simply
trying to allow a deletion to occur
without affirmatively responding
to delete the challenge goods and
services that that practice would
no longer really be an option.
Our thought in asking for comments
about this audit processes that
a registrant who simply does not
respond may have bigger problems
in his or her registration,
for which evidence of non use
is not available.
But in fact the mark was not in
use for more goods and services
in the registration that that then
were originally challenged.
If we target it for later on it,
we can find out if the rest of
the registration that was not
challenged in the preceding holds
up under for further scrutiny via
post registration examiners.
But we are aware that such a policy
could raise another issue for foreign
domiciliaries who may wish to not
respond to an office action because
they don't want to have to get US
Council in order to affirmatively respond.
They might prefer to just let
the challenge goods services fall
away and avoid having to hire an
attorney to make that deletion or
surrender the registration.
And but they might want
to avoid the later audit.
So we're looking for comments on
whether we should provide for
a way for a foreign domiciled,
domiciled registrant to be able to
respond to the office action and
simply delete the goods and services
without having US Council to do so.
Now the final action in an expungement
proceeding will include the examiner's
decision in that registration that
the goods and services that were
challenged that the mark the registration
should be canceled for each goods
or service for which the mark,
as determined to have never been
used in commerce or for which
excusable nonuse was not established,
or for non compliance with any
requirements under Rule 2.11 US
Council rule under Rule 2.23.
Failure to provide an email address
for electronic correspondence.
Or rule 2.189.
Failure to provide a domicile address?
The final action for reexamination
proceeding includes the decision to
cancel the registration for each good
or service for which the mark was
not in use on or before the relevant
date or for non compliance with the
same rules that I just mentioned.
2.112 point 2/3 and 2.189.
The registrant must respond to the
final action with the examiner's
decision to cancel with a request for
reconsideration and a notice of appeal.
Now,
if there is no response to the final action,
the USP Tia will terminate proceedings
and order cancellation of the
goods and services that issue.
A petition for reinstatement is available,
but only for an extraordinary situation.
But if the request for reconsideration,
it contains acceptable proof of use,
we will terminate proceedings.
Otherwise,
the examiner's decision to cancel
is appealed to the trademark trial
and Appeal Board,
and the regular board timelines will apply.
Now,
there is an estoppel provision in
the TMA so that goods and services
for which use in commerce has
already been established may not
be subject to further expungement
or reexamination proceedings.
But of course there's a nuans here.
If a registration was subject
to an expungement proceeding,
where proof of used was provided as
to the challenge, goods and services,
no further expungement proceedings
on those same identical goods
and services may be instituted.
However,
further reexamination proceedings
on those same goods or services are
not barred because the reexamination
proceedings involve the question
of whether the mark was in use as
of a particular relevant date.
So the proof of use relied on
to defend against an expungement
proceeding might not be the same
proof of use you would need to defend
against the reexamination proceeding,
which is tide to the relevant date on
which the mark was supposed to be in use.
Now I think it bears noticing that
the TMA istopover visions do not
apply to subsequent board proceedings,
in other words.
Even if a registration is subject
to an expungement or examination
proceeding before the director,
that registration may still be
challenged at the TTA.
Be on a claim of expungement,
abandonment or non use as appropriate.
As for the pending proceedings,
we cannot institute expungement proceedings
on the same goods and services.
If an expungement proceeding on those same
goods and services is already pending.
Like likewise, we will not institute either
an expungement or examination proceeding.
If a reexamination proceeding is already
pending on those same goods and services,
we will deny the later filed petition
unless it happens to cover goods and
services not already subject, not already.
The subject of an instituted proceeding.
Now expungement and reexamination
proceedings in the notice of
Proposed Rulemaking are included.
Now among the types of proceedings
for which suspension of action by
the office or the TTB is authorized.
The notice of Proposed Rulemaking also
proposes to amend the rules to reflect
our current suspension practice.
So generally,
as you know the TTB will suspend
proceedings when another proceeding
that is relevant to register ability
of the involved mark is on going.
The rule is currently written such
that this suspension practice is
limited to proceedings where the
exact same party or parties are
engaged in the other proceeding.
We want to propose.
We're proposing in the NPRM to amend the
rule to reflect our actual practice to
look at the relevance of the proceedings
to the registrability the registration
rather than this strictly look at the
parties to the both to the two proceedings.
Now,
some of you might like visuals.
The Commissioner for trademark,
like the visuals.
So I prepared this one for you.
This is an overview of the expungement
and reexamination proceeding.
These slides will be proposed
will be posted on our website,
so you can certainly take
a closer look later,
but let me walk you through
this simplified version.
The process begins with a petition against
the registration that grows to the examiner.
There are two possible outcomes.
The institution decision which would be
combined with the issuance of the first
office action or denial of institution.
The next two steps have a two month
time frame where the red restaurant
submits either an acceptable response
or an unacceptable response,
or otherwise does not respond.
If the registrant does not respond,
there's immediate cancellation
of the goods and services,
and potentially that registration
is tagged for later audit.
Now if a response comes in,
the Examiner will review the response.
And there are three possible outcomes from
the examiner's review of the response.
If the response is successful because it
establishes use excusable nonuse or deletes,
the challenge goods and services,
the proceeding is over its
terminated no cancellation order.
A second option is the final office
action will issue because the response was
not acceptable or there was no response.
Or thirdly,
cancellation of the challenge goods and
services because there was no response.
Or deletion.
The next two steps have
a two month timeframe.
If the proceeding is not successful,
the registrant can either file a
request for reconsideration or appeal.
Again, the registrar could
choose not to respond,
but could potentially potentially face a
later audit of the rest of the registration.
The Examiner will review the
request for consideration.
Or it will go to the trademark trial
and Appeal Board to handle that appeal.
At that point,
if the request for reconsideration
is acceptable because proof of
use was offered and accepted,
the proceeding is successful
and the IT terminates,
or otherwise the markets cancelled
after the board proceeding.
So that's a visual and you'll certainly
will have time to study that later.
Now moving on to.
A few other areas that are
covered by the MPRM.
So these proposed attorney
recognition rules are not part
of our TMA implementation,
necessarily,
but are driven by the needs to have
clear correspondence rules for the
office and to implement provisions
of our database login project.
First of all,
sort of as an over overarching comment,
I want to note that these proposed
rules move from using the term
representation to using the term recognition.
The USPTO two recognizes representatives
for the purpose of determining who is
authorized to act for the applicant
or the registrar before the office.
We do not control the actual
representation agreement between
the attorney and the client,
so we're changing the wording
of the rule to make that clear
and to reflect the reality.
Now, under our current rules,
recognition ends when an
application is abandoned,
a registration expires or is cancelled,
or it changes ownership.
Under the proposed rule in the MPR,
M recognition would instead
continue after all those events.
So that means in order to end the
recognition of the attorney by the USP Tio.
Owners and attorneys would be required
to proactively file an appropriate
revocation or withdrawal document
rather than the current situation,
where recognition automatically ends.
We want to make this change to our
rules in order to match our practice.
The background for this slight change
lies with our correspondence rules.
The USPTO is supposed to correspond
only with the applicant or registrant.
If the applicant or registrant is
not represented by an attorney, so.
If recognition is ended after certain events,
we should stop sending correspondence
to the attorneys correspondence address,
but we don't.
Because stakeholders told us not
to follow our correspondence rule,
Attorney stakeholders told us
they wanted to continue receiving
correspondence so they could be
sure of when the post registration
filings were due.
For example, to get that courtesy email,
reminder that a maintenance filing is due.
So we want to change our rules
to reflect the practice that we
actually undertake right now.
Now additionally,
this rule change will facilitate
implementation of the role based access
control system for applications of
registrations that were developing.
So as you may be aware,
as part of the USPTO's forthcoming
identity verification process for
database login, users are likely to be
assigned a limited number of roles to
control and delegate access to filings,
including attorney attorney, support owner,
and public administrator roles.
So these rules will tell us who is
authorized to touch a certain application
or registration for purposes of controlling
the security of our database to make
sure that unauthorized parties can't
amend an application or file a change of
correspondence address or or the like.
Now, if we were to maintain our current rule.
In order to submit the TS form to file an
maintenance document on behalf of a client,
the role based access controls would
require the no longer recognized
attorney to 1st request it.
Permission from the owner in order to file,
and we're concerned that that could,
it could end up with miss deadlines.
Having to add a separate process to the
process of filing maintenance document.
So we really would like to fix the
rule in order to match our practice
and allow us to assign rules for
access controls to tighten up.
Our database security and protect
the integrity of the register.
Now we are also proposing a rule to
change that we clarified the attorney
obligations when withdrawing from
representation and differentiate
the grounds under which the
attorney must request. I'm sorry.
Where to different differentiate
the situations where the attorney
may request withdraw versus those
situations where the attorney must
request withdrawal and there really
should be no surprises there.
But this will allow us to be
consistent with the USPTO rules
of professional conduct.
Now wow. Lastly, in the rule package.
We're up a proposed rule that
is also unrelated to TMA,
but it's simply to codify the
USPS longstanding procedures
concerning court action.
I'm sorry concerning action on
court orders canceling or affecting
a registration under 15 USC 1119.
The USPTO requires submission
of a certified copy of the Court
order and normally does not.
An act does not act on such orders
until the case is finally determined.
We're simply embedding the
practice into a rule.
Here we go.
So that was a long summary
of the rule package,
but it was designed to facilitate
your efforts to provide formal
comments to regulations.gov,
wanted to flag those issues where
we're looking for a different options,
and we'd like input on the
option that you prefer.
We are hoping that you will help us
refine this rule package into a rule.
A final rule that we can
all be comfortable with.
Now here's the information about
how to submit formal comments,
and of course,
remember the deadline of July 19th.
If you are looking for these
slides or you're looking for a
recording of this round table,
or a way to send questions
to the USPQ about the TMA,
here is a reference slide for you.
Go to this website to our
website and you'll see all the
information that we have available.
You'll see information about the
second of these two roundtables on
June 14th and the mailbox to which
you can send informal comments again,
informal comments will not be considered
part of the formal rulemaking record.
If you want them considered in the record,
they need to go to regulations.gov.
Now, one thing I did,
if I can get there is I put together
3 reference slides for you so you can
go back and look to see which rules
are implicated as to which of the
different features of the of the MPRM.
So as you see for letters of protest,
there is a tweak to 2.1494
shorten response period.
These are all the rules
that were implicated there.
Here are the non use cancellation
rule sections that have been amended.
There are some that are new.
There are some that are just
amended to be conforming.
And then we have recognition of
representation and withdrawal
rules as well as court orders.
So those you can go back and make sure
you cover all the rules in the Imperium.
I wanted to actually close my
remarks with a suggestion.
You might have noticed that as
part of our initiatives to protect
the integrity of the trademark
register from false claims of
use in fraudulent submissions.
More generally,
we are implementing disincentives for
maintaining inaccurate registrations.
Or perhaps I should say more directly.
We are incentivizing accurate registrations.
Now, one disincentive implemented in
January 2021, is the deletion fee,
and the other is the TMA expungement.
An reexamination proceedings.
So let me explain.
The deletion fee is a $250 per
class fee charged when goods and
services are deleted in the context
of a post registration examination
of a Section 8 or 71 declaration.
To maintain the registration,
and this includes the post
registration audit process.
If you were selected for audit.
Now to avoid the deletion fee,
registrants should file an accurate
Section 8 or 71 declaration that
reflects only the goods and services
for which the mark is in current use.
If you fail to do that and you are,
you're targeted in an audit or target
in a post registration proceeding,
you will have to.
If you're if you're forced to
delete goods and services,
you will have to pay the $250
per class deletion fee.
And if you fail to pay the deletion fee,
your entire registration is cancelled.
Non response is not an option.
Now,
outside of the context of the Section
8 and 71 declaration examination,
registrant should keep their
registrations clear of any goods
and services in which the mark is
not in current use at all times.
So to incentivize this behavior,
the USPTO established a zero
fee for filing a section seven
amendment that deletes unused goods
and services from the registration
at anytime outside of an audit.
I'm sorry outside of a post registration
examination for the maintenance filing.
So I highly recommend that registrants
and their representatives review their
registrations for accuracy and make
adjustments now through this zero fee.
There's no fee process for doing
so for fixing up the registration
and clearing the Deadwood from
your own registrations.
And I would add that doing so would
be a really easy way to avoid having
one's registration targeted for an
expungement or reexamination proceeding.
So that was my public service
announcement to clean up your
registrations early and often.
And so now I would like to
hear what you all have to say.
We have 5 speakers signed up to
provide questions or comments and
after that we will take questions
via the email box that Tasha
indicated for those of you who did
not sign up for a speaking slot,
you can email your TMANPRM related
questions to the TM underscore web
and R at USBT o.gov box and we will
attempt to answer them here today.
So with that I'm going to turn
it back to Tasha.
To let us know who the speakers are,
who have signed up.
Good afternoon,
the first speaker is David Rome.
There we are. Thank you so much.
You can't hear me though, right?
I can hear you, thank you.
Thank you very much.
I had a quick question for this session.
One of the most surprising parts of
the NPRM for me was the fact that
petitions for expungement examination
would be immediately uploaded into
the T SDR and that really factors
into sort of strategic considerations
in filing those kinds of positions,
and I'll wondering to what extent was
that maybe a technical requirement?
Because I really expected that to work,
maybe more like a letter of protest.
OK, thank you for your question.
Because the purpose of the proceedings
is to clear Deadwood off of the register,
and because the evidence submitted
to the office is something that
the office is considering,
whether to make the prima facie case,
whether it makes a prima facie case to
institute proceedings for our purposes,
all of that information needs
to be made public immediately,
an immediately so that the registrant
whose registration is the subject
of the filed petition.
It has, you know,
notice early and often that they
may be subject to these proceedings
if they are instituted so we wanted
to get that information uploaded
as quickly as possible.
Now,
to the extent that that that
raises issues for others who are
looking at the registration,
they might want to,
you know if they have evidence about
you know other goods and services in
that in that same registration they
might want to file their own petition,
but it certainly is something that we
didn't see any reason to keep that nonpublic.
Because that that that information may
be useful to others who are looking
to see if a registration that is
blocking them from from applying is
not in use and needs to be expunged.
So or re examine for that matter,
so we didn't really.
It wasn't a technical requirement,
so much is just that the purpose in
the intent of the proceedings was
to get Deadwood off the register
and have have folks bring that
information forward wherever wherever
it resides and bring it forward to us.
So we can decide whether the
evidence rises to the level of.
A prima facie case of non use,
so I hope that answers your question.
Yeah, yeah it does. That's very helpful.
It's just to take that into consideration
when putting together more formal comments.
Great, I look forward to seeing them.
Thank you.
Thank you,
our next speaker is zingha wofi
me hi good afternoon.
Hello, good to see you again.
Yes I want to thank say thank you
to the USPTO for this round table.
I will definitely be re watching this
as soon as available and I want to
share my gratitude for the willingness
to discuss these changes as well as
the opportunity to get some feedback
from us out here in the trenches.
I would like to submit comments
regarding the shorter three
month response period for office
actions and such under. We were today.
We discussed three different options.
Deputy Commissioner Cotton did delineate
that for us and it just took me back to
the roundtable we had back in February.
I think it was.
There were quite a few attorneys and
business advocates on that round table.
They were speaking out against the examiners,
one having discretion to decrease their
response time from the typical six
months an I didn't submit comments.
Against this particular change,
in light of the fact that applicants
do have an opportunity to request
an extension of that time,
we all know many of us know that oftentimes
applicants do not need the entire six
months to respond to an office action.
We also know that bisney busy business
owners and innovators entrepreneurs,
they just get super busy.
And so for that reason,
I'm highly hesitant to even advise
them that they have six months.
Many times they wait until.
Five months and 25 days before supplying
that information that was requested of them.
So closing the gap to three
months I definitely support.
However,
also in that round table in February
various Abacus spoke out against
the attending of filing fee for the
request to extend it beyond the three
months an I would just like the USPTO
Teo to reconsider that one $25125.00
as excessive for such requests.
I'm so glad that today we were able to
discuss two other options in this case.
Coming from a litigation background.
I kind of look at that request.
It's like a motion to extend time to
produce or or you know you need time
to provide an answer for something.
An what if I were to look at
our litigation system?
Although that is not what this is and
consider those type of motion fees.
I'm in New York,
so when I refer to New York
State Supreme Court fees looking
at the US District Court fees,
the federal court fees and even the
United States Supreme Court fees,
nothing approaches $100.
Nothing is approaching $100
for those type of motions.
So in light of the foregoing.
I respectfully request your
PTO to reconsider.
This fee is excessive on behalf of
artworks and the businesses that we serve.
I support either of the two options and
I'm actually going to look at it a little
bit more and submit formal comments
and just thinking about the fact that.
I think it was the third quarter
of 2020 in the United States over
the surge in business violence.
Nearly 80% increase due to the pandemic.
Now I don't know if it because people were
bored at home and they decided to create,
or if the corn team allowed.
Our time for creativity to explode or expand.
Either way, these are the businesses
and the individuals that we serve.
These are the new businesses,
the small businesses,
and they matter.
And from my own experience
as a director of an
organization that runs a
nonprofit legal services program,
this fee is excessive for them.
Any additional fees excessive from
legal fees are excessive for them,
and you know, I just want to remind
us or President Biden's April.
2021 Proclamation on World
Intellectual Property Day.
In honor of the 75th anniversary
of the Lanham Act,
that Commissioner Gooder just refer to.
The opening preamble of that proclamation.
President Biden went straight to we're
celebrating inventors, innovators,
and the creators that enrich our lives right.
These are the people that create the product,
services, companies, industries of tomorrow.
It was very.
I don't want a dramatic population,
but the proclamation itself recognized
the power of intellectual property
protection for our small businesses,
enabling them to compete, thrive,
and play an important role as the heart.
And these are his words as the heart and
soul and the engine of our economic progress.
He went on even further to say that this
is critical to our success as a nation,
and these are the inventors.
These are the innovators,
either creators that we advocate
for at artworks.
They make up 90% of businesses in the US.
They employ nearly half.
Of America's private sector
workers and President Biden cited
that they create 2/3 of new jobs.
So I I'm constantly always trying
to advocate for these people,
and even though some of us may
figure oh one 2575 fifty that's not
alot you're talking about people
that have inventions as President,
Biden said,
born in the garages of small towns, right?
And they should have.
Beyond equal footing as those inventions
of developing high tech labs.
So this year this world,
this year's World Intellectual Property Day.
He made sure President Biden that it
highlighted the critical roles of
these small businesses play for the
resilience and the growth of our economy.
An if this proclamation is any indication
of where our country is heading,
I'm all for it.
We have to focus on them and I don't want to.
Would it be to deadhorse?
Hopefully the horse isn't dead,
but this is necessary for new businesses
so that they have opportunities.
It's it's necessary for greater
economic prosperity for our country,
and so an interest of not beating that horse.
I want to close out to say that I
request that the USPTO reconsider the
new filing fees and this is just one
I'm going to present more in depth.
Comments that really address all of witness.
I do not believe applying a fee that
exceeds even the fees by our state
courts are federal district courts.
Even the highest court of our nation.
United States Supreme Court in any
way encourages the creative tivity
that President Biden encouraged an,
which is also at the core of the Lanham Act.
So let's get behind our small
businesses and for fees imposed,
I'm going to support one that considers
the economic nature of the applicant.
So thank you for an opportunity
to share that,
and I will be submitting. Formal comments.
Thank you very much and I look
forward to reading your comments.
Yes, it's it's certainly always a balance,
right? How do you promote
access to the to the IP system?
How do you cause recover costs were a fee?
You know fee funded agency so we have
to make sure that we cover our costs
so that the system works for everybody.
And then how do we make sure that we are
moving applications efficiently through the
system and people aren't just, you know,
waiting six months because they can.
You know.
Certainly trying to find that
right balance is is very difficult.
So I absolutely appreciate your input.
On helping us to try to find that
right balance, we need that input.
We need those reminders to find
that the right target,
the right sweet spot that we can do all
of those things with one with one choice.
So I appreciate your input very much.
Thank you very much.
And nice this year again you too,
alright.
Tasha, who else do we have final speaker
for today will be Sylvia Esparza.
She is online but may be experiencing
technical difficulties.
Perhaps we should go to one of the audience
questions while we work to get Sylvia.
As far as the online great Robert
Lavash will be our moderator for our
audience Q&A and if anyone else in the
audience has questions for our usto panel,
you can email them now to
tmunderscorewebinar@uspto.gov.
Thanks, Tasha.
First question,
we have concerns expungement,
proceeding proceedings and the
question asks am I correct that
under the expungement procedure,
three years of non use is fatal
even if the registrant has an
intent to commence use or no intent
not to commence use.
So a foreign registration under 66A
or 44 E is federally vulnerable if
the mark is not put into use within
three years after registration,
regardless of the factual circumstances.
For example, attempts to license.
Do you want to answer that Bob?
Well, I mean I.
The expungement proceeding is
available for all those bases.
So then the question then becomes
whether the petition and then
during the course of the preceding
non use is established.
So in that case,
I think the answer is yes, it's.
Potentially fatal for
applications under 66 or 44.
That is my reading as well.
Under the treaty, those the Treaty
entitlement is that use needs to be made.
So at least three years after the
registration, and if it's not,
it could be on the 3rd on the first day,
last day of the third year,
and that would save it.
But if it's not put into use within
three years post registration,
then it is subject to cancellation
at the Board an it is subject to an
expungement proceeding before the director.
So yeah, we agree.
Let me just review it.
See, I might be misunderstanding, right?
Yeah, I'm just looking at
the timing provisions.
You can request it at anytime following the
expiration of three years after registration,
so that's consistent with that. OK.
There's nothing else to add to that question.
The other one concerned.
Our attorney recognition
proposals in the question is.
PTO will notify before we move on
one of our viewers has asked about
excusable nonuse for that question, yes,
excusable nonuse would be an option.
In expungement proceeding correct me.
Yes, so moving on to the
attorney recognition question.
PTO will notify registering an counsel of
record record of cancellation requests,
but per team EP section 60402,
the attorney client relationship
in the PTO terminates upon issue
of the registration unless Council
initiates contact.
There's otherwise no counsel of
record over and issued registration.
As I understand it,
PTO notification to the last Council
record is therefore not effective to
give notice to the registration correct.
The rule. Provides, I believe.
That we will notify both.
The registrant an the registrar's attorney.
Now under our current rule.
Technically,
we're not supposed to let
the registrant attorney.
We're not supposed to notify
the registrar attorney under our
current rule because doing so would
violate our correspondence rules.
However,
in this situation we wanted to
make sure that both the registrar
tan their registrants.
Last attorney of record were aware,
so that's that's actually consistent
with our practice, not a rule.
To give a courtesy email to both the
Register on the registrants attorney
that the filing of a petition to
request institution of proceedings for
Expungement Re examination was filed.
Now of course we want to amend our
recognition rules so that we would
be notifying the registrar and the
registrar's attorney consistent well.
We would then theoretically just notify
the the red the registrants attorney,
but we've carved out this proceeding
so that it's very clear that we
will notify both the registrar
tan the Registrar's attorney.
So this is an exception that we
built into the rule so that we could
make sure that we were sending the
notification to as many parties as
possible to let them know that this
was filed. Is that a fair reading, Bob?
Yeah,
I mean that goes to the very heart
of the issue we're trying to
resolve with the proposed rules.
We're trying to make our practice
consistent with the rule and
as it is as it stands, we,
although recognition of the.
Registering attorney ends at registration.
We do currently keep the attorney
of record in the in the record.
Once the if we if the proposed rules
go through as we envision them,
that hopefully would be resolved.
That inconsistency.
Yes.
Alright,
moving on this question concerns Section 7.
Following Deputy Commissioner
Cotton suggestions is it envisions
that a Section 7 could preclude an
expungement or re examination for
registration in whole or in part.
The answer is yes to the extent
that the section
seven amendment process was used to
delete unused goods or services.
Prior to the filing of a petition to
expunge or re examine those goods,
then the the wouldn't be an issue because
those would no longer be in the registration.
Now, if once a petition is filed for
expungement or examination as to those goods,
the registrar has the option of filing
a section seven amendment for zero
fee to delete those goods or services.
That would work then,
as a response to the office action.
As long as the examiners notified by
the registrant that that happened.
So to the extent that the Section 7
process is not part of the expungement
and re examination process.
If something happens over there that
needs to be notified over here so that
the expungement or examination examiner
can be aware of it and determine
whether that moots the proceeding,
and it certainly would if the deletion
is accepted under the Section 7 process,
it would mute the preceding for
expungement reexamination as to
the deleted goods or services.
But again,
the registrant must respond and
tell us that that happened so that
that we are aware that.
That it had happened and is it is,
you know,
acceptable response to the office action
for the RE examination or the expungement
Bob do you have anything to add to that?
I do not.
OK.
Jerry Rogers here,
may I add something to that, absolutely.
I do want people to be
cognizant of the fact that if.
The party whose registration is the
subject to the expungement proceeding
also happens to be involved in a TTA
be proceeding that was suspended
because of the expungement or
reexamination proceeding that Section 7.
Change or any action taken in regard to the
registration could have consequences for.
But ETA be proceeding,
even if it would moot.
The expungement proceeding.
It may not moot that ETA be proceeding.
It could possibly result in a
judgement in the DTA be proceeding
so just a little complicating factor
if both proceedings are pending
at the same time and the board
has suspended the TTAB proceeding.
Great thank you Jerry for adding that.
I appreciate the perspective.
Right, and I think this next
one is also for Judge Rogers.
Currently, the three year abandonment
presumption can be overcome in
a cancellation proceeding by
showing an intent to commence use.
It is not the case at the board
that three years on on non use
automatically equals cancellation.
So is this expungement rule going to
apply in cancellation proceedings so
that the three years of non use results.
Not just in a presumption of abandonment,
but automatic cancellation.
Like an answer what the intent was,
but Jerry if you want to go ahead, go ahead.
Do start Amy and I'll jump in.
The expungement proceeding is
not an abandonment proceeding.
It was not designed that way.
If the mark was never in used,
an use is required under the to be
a trademark under the definition
of a trademark.
Use is required if it was never in
use and it was supposed to be in use.
It is not a trademark under the definition.
So then abandonment is a separate issue
and it doesn't apply abandonment as
as to a mark that met the definition,
and that's not what we're talking about here.
So from that perspective.
For an expungement proceeding
before the board,
it would match what what's happening in
in the director ordered proceeding in
that it's not an abandonment proceeding,
so the intent issue is out of the picture.
That's not the case for a non you
know regular abandonment proceeding
before the board.
But Jerry,
I'm sure you're going to answer that
question a lot, lot more academically.
Then I will.
Actually,
I will probably defer to your
statement of the intent of the rule,
and we may address this further
in the final rule,
where we would comment on any suggestions
or report any comments and suggestions
that were received and respond to them.
But ultimately,
if there are issues raised before the board,
we will have to decide those
issues when they are raised.
Clearly your statement now is that.
The intent I think your your
statement now is that our attendees
should look at an expungement
claim brought at the TTAB as.
Different than a traditional
abandonment or non use claim and
therefore the expungement rules would
apply in the TTAB proceeding in the
same way that they would apply in
the expungement ex parte proceeding.
I should stay in my lane, shouldn't I?
No, no,
I'm I'm just saying everything is
open to potentially being brought
before the board in the future,
and of course will have to decide
those issues if and when they come up.
Right,
but I think it's always good
for everyone to understand what
the intent of the office is.
An for anyone who has concerns about a rule.
Possibly having consequences different
than what we intend them to do to
provide us with their comments
so that we can consider them.
Great thank you Jerry and
thank you for the question.
Alright, next question is,
is there a timeframe within which
the office hopes to issue notices of
determination in ex parte proceedings?
So much at two months for letter of
protest or a similar target pendency.
I'm sorry, I'm sorry,
I'm just trying to understand the question.
Is there a timeframe within which the office
hopes to issue notices of determination?
Oh, what is the time?
I think that remains to be seen
on volume when she say Bob,
you know we're hoping to turn
the intent of the proceedings
is to be as fast as possible,
because this is supposed to be a way
to get Deadwood off the register
quickly so that folks can, you know,
applied it on the register who are
actually putting the marks to use.
So the idea is that we would be under,
you know,
time frames within the office as best we
can to try to move these efficiently through.
But because we have no idea how.
How many of these we will get?
It is hard to, you know.
Set the time frames now,
but the certainly the
intent is to move quickly.
Anything to add Bob?
Now just that you know there is the
four months total of response time
period built into the proposed rule,
right?
So you have two months to respond to
the non final and then two months at
the final office action stage issue.
Either request,
reconsideration or appeal so that
there's four months right there and
then you have to take into account.
The additional review and processing that
the office has to undertake for these.
But yes,
the intent is to do these
as quickly as possible.
The other question we had from the same
questioner is what is the purpose for the
additional explanation of the factual
statement of the relevant basis for a
petition which is not required by statute.
If only one claim in one registration
is permitted per petition?
Bobby got that one.
Yeah, I think the purpose of it is.
I don't know if it's explicitly
required by the TMA,
but you do need to specify in your
petition what exactly you're claiming.
Are you claiming?
Are you seeking a an expungement proceeding?
Where you're saying there's never been used?
Or are you seeking a reexamination
proceeding where you're saying that use
hasn't been made as of a certain date?
So that's that's the reason
for that factual statement.
I don't think it's intended to be.
Overly complicated or burdensome.
I was looking in the statute.
But I'm not seeing anything as
additional facts that support
the allegation that the mark has
never been used in commerce.
But yeah, I think I think it
was just as Bob said to be very
clear what is being alleged.
OK, anything else to add?
There is a question,
how much of the TMA was driven by
the types of applications we've been
receiving over the past few years.
Well, I think if you go to the
legislative history for the the Trademark
Modernization Act, there was a explicit,
you know mention that the the
Congressional intent was to address.
An influx of applications featuring.
Suspicious specimens of use that perhaps
this specimens of use that we were receiving
in applications was were not accurate,
were fake or doctored, or or just
didn't reflect actual use in commerce.
So I think it was built into the
legislative history that that certainly
was to address an influx of applications.
Now, I don't think it's specifically as to
where those applications were originating,
but certainly it was to address
fraudulent submissions and.
Fake or digitally altered specimens of use
that don't reflect actual use in commerce.
Anything to add there?
Nothing from me. OK. Alright,
next question noting the current
heavy workload in the examining core
will expungement in RE examination
be handled by the existing
examination core or a new group?
The answer to that question is.
Yet unknown, we're still deciding
on how these will be handled.
Certainly we will be,
you know, developing guidance,
internal guidance as as the final rule
takes shape and we will determine what
that guidance looks like and then who best
should apply that guidance in examination.
So I think we will.
That will be something that we will
be determining in the coming months.
And Bob, it looks like we got a comment.
We got a comment about use is not required
for a Paris or Madrid filing that is,
right use is not required as a
condition to obtain the registration,
but use is required as a condition to
maintain the registration and it must be
used within the first three years post
registration as that did that moment,
that it is not used when it's
required to be used.
Then it is not a market
is a perspective mark.
Until then, the rights don't invest,
but then then it it is at that point.
So I think the issue of the
definition of a trademark was
what the commenter was raising.
But that was simply the theory
behind why expungement was
something other than abandonment.
That was the underpinnings of the thinking
of of the office and of congressional
staff who were working on the TMA.
In developing the proposal.
So I just wanted to address that.
Alright. In our next question,
how will brand owners be able to search
in test test to find which registrations
have expungement and or reexamination
proceedings that were instituted?
Based on how tests works.
You will not be able to do that.
Because. Currently,
the status that status would
not be searchable in tests.
So.
That will not be an option.
I don't know if you have
anything to add to that.
No, but presumably if you were
searching tests and you found a
problematic application that was
blocking or registration that was
blocking you in your clearance search,
you would probably dig deeper and
go to the T SDR status tab where all
of this information would be found.
So if you found a problematic one,
you would certainly be able to find
out whether proceeding was instituted
very easily in the SDR documents tab.
It would be right there for you.
Alright, next question.
The NPRM states that registrants that
are subject to ex parte expungement
or reexamination proceedings in shows
surface sufficient use in response
cannot be challenged through the
same type of proceedings again.
But registers that wish to amend
their own registration should
do so via Section 7 amendments.
Shouldn't registrants that proactively
amend their registrations be permitted
to voluntarily submit evidence of
use so as to avoid the possibility
of expungement or re examination and
get the benefit of the conclusive?
Effect.
The installation question this,
this is something that that we have
had stakeholders raised before.
What we recommend is that if a registrant
wants to provide evidence of use,
proof of use through the Section
7 process such that it would be
entered into the file wrapper.
Certainly registrants can do that.
The office would not be evaluating
that proof of use to see if it meets.
Requirements so from that perspective
the restaurant is free to do that,
and that that might be a good practice,
but it's not something that the office then
would validate if that makes any sense.
We wouldn't examine that proof review
says to each one that would be an
enormous workload for us to do,
and so from a resource perspective, I don't.
I don't think that's that's feasible
at this time,
but certainly providing that evidence
and having it in the file wrapper
through the Section 7 process.
Would not would not be problematic.
You would certainly be able to do that,
and that might be useful for folks who
are or looking at registrations and
looking at your registration to figure
out if if there's any vulnerabilities,
I should say, but that's certainly
there's an Ave to do that,
but it's not something that the
office would examine or validate,
if that makes.
If that makes sense.
Bob, you have anything to add on that.
Nothing other than just to say that
that preclusive effect is derived from
from the estoppel provisions in the TMA.
So, you know,
that's where that's coming from so.
You know, this voluntary submission
would not really qualify under the
Statute for that preclusive effect.
That's a great point. Alright, we have
a follow up on the three year non use.
How do you reconcile the three
year non use drop dead deadline?
Oh, with a case. Let's see here,
Federal Circuit has ruled that although
the Trademark Act refers to abandonment,
the allegation that a mark was never used.
Please, if necessary, nonuse for abandonment,
so long as the period of nonuse is at least
three years or less than three years,
is accompanied by lack of intent
to resume or commence use.
So again, I am Russian here with the case.
So meaning that OK,
this is a treaty interpretation issue.
Fun, so the. Implementation of.
The treaty provisions regarding
non use cancellation.
the US initially implemented those
through the doctrine of abandonment.
Now let me back up.
Abandonment again the Trademark
Modernization Act creates a new ground
for cancellation and a new proceeding
for a mark that is never been used.
So it is creating a new type of of
cancellation that is not abandonment.
So to the extent that there is abandonment
case law that addresses section 44.
In that case it was a
section 44 registration.
It is not applicable to the TMA provision.
It is a different provision.
So I'm certainly certainly happy
to have a conversation with the
Commentor about treaty interpretations,
but I don't know that it's the
best use of our time here today,
but we can certainly have
that conversation offline.
Bob, do we have any other
questions coming in?
As far as I can tell that that was it.
Yes, that was the last question that we
received from the audience Missus Farza.
If you are available for our June
14th round Table, then we hope that
you will be able to return then and
provide your comments or submit them.
At this time, will move forward with
closing remarks from Chief Administrative
trademark Judge Gerard Rogers.
Thank you Tasha.
I will focus just for a moment on the tabl's
role in all of this proposed rulemaking.
Obviously we are a small part of some
very significant changes to practice
that are of interest and potentially of
concern to both registrants and would
be petitioners or erstwhile petitioners.
So one could look at that emmas
provisions and the proposed rules as
really just providing or concerning
that ETA be to the extent that we
have to establish procedures for
handling appeals from examiner.
Reviews of expungement and
reexamination proceedings and their
final determination on those appeals,
of course,
are going to be handled in the
same way procedurally.
That our existing appeals are,
of course,
the substantive issues that will be
before us when we are reviewing those
appeals will be different in kind from
the existing appeals that we now here.
We also, of course,
have to.
Set up a way for our systems to accept
and to process appeals involving
registrations which did not exist before.
We've always had appeals
involving applications,
so there's the IT work that we're
doing to allow for appeals involving
registrations rather than applications.
Of course,
we also have the Tmas provision of an
expungement ground for cancellation,
and I think some of the questions
that we've heard today bring up.
The issue of is that expungement
claim that can be brought in a
cancellation proceeding at that
ETA be significantly different than
existing abandonment or non use claims.
Now, to the extent that.
We are contemplating expungement as
a claim brought at the board as akin
to expungement brought in an ex parte
proceeding before the examining operation.
But you might have to think of it as
a different claim and I think Congress
has made it clear that they were not.
Supplanting or offering
expungement as a claim at the TTAB.
As a replacement for anything
that already existed.
So our existing case law will
continue to influence how we decide
abandonment and non use claims
fraud claims and things like that.
But we may have to develop new case law too.
Influence how we decide the expungement
claims that will be potentially
brought once the TMA takes effect.
So we do have to,
I think,
think of expungement as a new
type of claim at the board and we
will see how we will handle it.
And until we get those claims and
have to decide them on the merits,
we probably will have little
to say about it until we.
Have to say something about it.
Up the other thing that I think is
important for our stakeholders and
our customers to keep in mind is
the interplay between TTAB proceedings
and these new proceedings.
As one of our speakers,
one of our commenters said
this is not litigation.
The new X party proceedings before the
examining operation are not litigation.
TTAB litigation involving an
expungement claim would be litigation.
So the new proceedings are
additional tools in the toolkit
of anyone who is interested in
removing a blocking registration,
or perhaps removing a registration
that may not be blocking,
but for other reasons,
you may think it just
shouldn't be on the register.
The standing requirement,
now known because the Federal
Circuit case law as the entitlement
to a statutory cause of action
is present in the TTAB proceeding
but not in the proceedings being
brought in the ex party context.
As one speaker already pointed out,
you also have.
All of the information you gathered
during your investigation that
you are filing with your ex parte
proceeding and if it is instituted,
that information is uploaded right away.
Whereas if you bring an
expungement claim at the board,
it's notice pleading to get that
started on you may not be providing
a lot of information other than your
allegations in your petition to get
that proceeding up and running.
There are.
Strategic considerations that
people will have to consider whether
they want to go to the board,
where they can couple an expungement
claim with additional claims where
they have the possibility of a
quick default judgment which might
be even quicker than a resolution
in one of the ex parte proceedings
where you can go to trial and get
discovery on those other claims.
If you think it's important to
bring not just an expungement.
Claim, but also to bring some other claims.
So I think the statute and the proposed
rules give us a lot of pause and a
lot to think about and open up new
opportunities for all of us to think about,
and hopefully choices are a
good thing in this context,
when the legislation provides those choices.
So with that,
I will thank those people who have
spoken and provided comments and.
Echo the remarks of Commissioner
Gordon earlier that we are interested
in all comments, informal or formal.
But as Deputy Commissioner,
Cotton pointed out.
If it's formal,
you may see it summarized in the final rule.
If it's informal, will certainly consider it,
but it may not be in the roles
in the final rule package.
Thank you, Tasha.
Thank you, Amy.
Thank you,
Chief Judge Rogers and thank you
all for you all for attending our
roundtable today and for providing
the questions and comments.
As all of our speakers have mentioned,
if you want to provide formal comments
on the Trademark Modernization Act,
Notice of proposed rulemaking
that will be part of the official
records and reviewed and responded
to in the final rulemaking,
please submit them at
www.regulations.gov by July 19.
This roundtable was recorded on
the video along with the slides
will be made available on our
website within two to three weeks.
We will email links to all that
signed up to it to attend today.
Once these materials are available online.
Thank you all and have a great
rest of your day.