-We are very pleased to present our
webinar on "Insights into nonuse
cancellation proceedings" at the USPTO.
And our speaker today is Amy Cotton.
She's the Deputy Commissioner for
Trademark Examination Policy at the
USPTO and in this role she oversees
the Office of Trademark Policy,
Petitions, and ID class. As well as
the Trademark Assistance Center,
the Office of Trademark Quality
Review and Training,
the Trademark Law Library,
Customer Experience, and Trademark Outreach.
So Amy is certainly somebody who knows
a lot about what's going on at the
USPTO. At the end of the presentation,
when we get into the question-
and-answer session,
she's going to be joined by two experts.
One is Montia Givens Pressey.
She's the Senior Attorney in the Office
of Trademark Quality Review and Training,
and also a legal liaison to
the Post Registration Unit.
And also Bob Lavache.
He's the Senior Trademark Legal
Policy Advisor in the Office
of the Deputy Commissioner for
Trademark Examination Policy.
Well, with that,
I'm going to step away
and turn it over to Amy.
Who's going to talk you through some insights
into the Trademark Modernization Act's
nonuse cancellation petitions.
-Thank you, Jason.
Good afternoon everybody.
It's really nice to see you again.
It's been awhile since we've gotten
together to talk about the TMA.
If you recall,
last year we got together a few times
as we went through the rulemaking
process and worked through how to to
develop, with your help, these proceedings.
So now we have these proceedings.
We implemented those on December 18th,
2021 and I thought you might
like to know how they're going.
And they're going pretty well.
A couple of things. I wanted
to share our experiences
with you so far,
because I bet they will: number
one, help you decide about whether
to use these proceedings and we
want you to use these proceedings.
We did a lot of work on them with you,
with your help. And number 2:
we want you to prepare more
successful petitions because I think
that's what everybody would like.
So let's advance here.
So level setting though. A couple
of questions that came in,
wanted to make sure that everyone knew
where we were starting with the TMA.
So we're going to actually start and I'm
going to outline the proceedings for you.
So the the TMA proposed new proceedings
to cancel registrations for nonuse.
This was to facilitate mark clearance,
get unused registrations off of the
register more quickly and this is a
new mechanism by which to do that
without having to go to the Board.
Now the first proceeding that Congress
laid out for us is expungement.
Expungement, the target of these proceedings,
is a mark in a Section 1, 44, or 66
registration that has never been used
on on some or all of the goods or
services identified in the registration.
Now there are three types of proceedings
where this new claim or this ground
for cancellation is available.
One is the petition-initiated initiated
proceeding before the Director. Another
one is a Director-initiated proceeding.
And the third is a cancellation
proceeding before the Trademark
Trial and Appeal Board.
Let me be really clear 'cause I realize
there's probably some confusions based
on the title of the presentation.
I'm only addressing the
proceedings before the Director
today. I'm not talking about the
Trademark Trial and Appeal Board.
That's that's not the focus
of my presentation.
It's really how these petitions
before the Directors are going.
So I apologize for anyone who was tuning in
for more information about TTAB petitions,
but I am not going to be
addressing that today.
Expungement. An expungement
proceeding before the Director may
be instituted in the window of time
between year three and ten years
after the registration issues.
So Congress, though,
provided an exception for this three
year period from TMA enactment,
which was December 2020.
Any three-year-old registration can be
subject to an expungement proceeding.
So for the next little less than two years,
any registration can be attacked for
expungement through these proceedings.
You got it. Two year window left
in order to do that.
That was designed to try to get
some of these older registrations
that were unused and just taking
up space on the register off.
So if you have a registration
that's been sitting there,
that's over 10 years,
you can use these proceedings
to get at those for for the for
the next year and a half or so.
Now I want to be really clear
about expungement.
It is an entirely new statutory
basis for cancellation.
It only evaluates whether the mark
was used on the challenged goods and
services prior to the date of the
filing of the expungement petition.
It's not abandonment.
It's not an abandonment claim.
The registrant's intent to resume or to
commence use is just not relevant. For that
you have to go to the Trademark
Trial and Appeal Board.
Furthermore,
expungement does not evaluate whether
the mark was put into use as of
the dates required by the statute.
That is a question
for reexamination, which we're going to next.
So the second proceeding that
Congress created before the Director
is called reexamination and the
target of these proceedings is a
mark in a Section 1 registration.
Hold on one second.
Uhm, the target of the proceedings
is a Section 1 registration that was
not in use as of the relevant date.
So what's the relevant date?
Relevant date for the purposes of
a 1(a) registration is the filing
date. The relevant date for the
purposes of a 1(b) application?
A 1(b) application would be the later of the
filing date of the AAU or the expiration
of time to file the Statement of Use.
So the filing date of the Amendment
to Allege Use or the expiration of
time to file the Statement of Use.
Now, a petition to request institution
of reexamination may be filed in the
first five years after registration.
Alright, next slide here. The elements of a
complete petition are are here on the left.
Any person may file a petition.
The filing fee is $400 per class.
We need the petitioner's
name, domicile, and email.
If it's foreign-domiciled,
the petitioner must provide a
designation of a U.S. attorney.
And if represented, the attorney name,
postal address, email address, and
bar information must all be provided.
Now the petition and the evidence are
immediately uploaded into the Trademark
Status and Document Retrieval (TSDR) system.
A courtesy email notification
is sent to the registrant and
the registrants attorney, as appropriate.
Now, what should the petition include?
The elements are all here.
Verified statement and
documentary evidence of nonuse.
The verified statement must lay out the
elements of the investigation for 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 that reasonableness of the search and
the number and the nature of the sources
the petitioner must search
will be determined by
case by case 'cause
it depends on the industry.
Once a complete petition is filed
and has all of the required elements,
a courtesy email notice of the
filing of the petition will go to the
registrant and the registrant's attorney.
Now if there is an element missing,
we will consider whether to issue
a 30-day letter allowing the
petitioner to perfect the petition.
And we are most likely to issue a
30-day letter if the Director is
going to institute a proceeding.
It doesn't make sense to issue the
letter if we're not going to institute.
So that would be a waste of time.
Now the 30-day letter provides
the petitioner an opportunity to
clarify the evidence of record and
the elements of its investigation.
Clarifying statements in the petition,
providing a legible URL,
a date of access,
or a legible copy of the evidence.
But no new evidence will be accepted.
So this is just to clarify some of
the things in the petition that that
may not make sense to the examiner.
The number one thing I'm going
to specifically note right here:
index. Index of the evidence. We need
the index. We need to know what
evidence goes to which piece.
So if you don't provide it in the petition,
you will, we, you will be delaying
consideration of your evidence while
we issue a 30-day letter asking for it.
So index is is pretty important here.
The index for evidence needs to be
a separate page and it should link
to your evidentiary exhibits.
So we'll get back to that in a little
bit. Also be really clear with the
specific goods and services you
are challenging.
We've had cases where a petition identifies
all the goods and services in a class,
but the evidence only goes to
one of those items.
So be clear what your evidence
is supposed to provide
evidence of
nonuse, which goods and
services your evidence
is providing
the nonuse prima facie case.
Uhm. Once the petition is filed,
there is no withdrawal available.
So if the prima facie case
is made in that petition,
the Director must institute.
So consider that. It's not, you know,
if you, if the two parties want to
settle, that's that's your business.
But we're not going to allow the
petition to be withdrawn at that point.
Because if there is prima facie case,
a prima facie case of nonuse,
we want to address that. We we have an
interest as the USPTO to making sure that
the registrations we issue are accurate.
That we've already issued are accurate.
Alright, sorry I'm getting some questions.
Uh, and for some who are asking what
are Sections 1, 44, and 66 registrations.
A Section 1 registration is one that
was based on use or intent to use. A
Section 44 registration is one that
was based on a Paris Convention filing.
And a Section 66 registration is one
that was based on the Madrid system,
the Madrid Protocol.
So those are generally foreign
incoming applications that have
filed via treaty mechanisms into
the United States. OK.
Got too many screens going.
OK, so this is again,
this is just an overview because
there is a a presentation that
I did many times last year.
It's posted on our webpage that
explains TMA and explains these nonuse
cancellation proceedings and how they flow.
So we're really just doing an overview
right now to set the stage for what we
have been seeing in the way of petitions.
So if you need more information
about TMA proceedings in general,
I urge you to go to our TMA page
which I will show you the link for.
And you can you can review
the information there,
which lays out the basics of the proceedings,
and there is a slide deck there and
a recording of the presentations
that I made last year which
has it all laid out for you.
But again,
let's refresh. A petition-
initiated proceeding.
The workflow goes like this
that you see on the screen.
Once the petition is submitted
and it's complete,
the petitioner is out of the process.
This is not an inter parties case.
This is now between the the
registrant and the USPTO.
It is the Director who decides whether
the prima facie case is made based
on evidence and information in the
petition and the USPTO's electronic
record of the involved registration.
If a prima facie case is established,
I said this before, the insti-- the
Director must institute proceedings.
We need to take a look at this registration.
If a proceeding is instituted,
the examiner will issue both a notice
of institution and an office action.
The same document. It directs the
registrant to respond within three
months with proof of use of the mark
on the challenged goods or services.
Now there are three options
for the registrant to respond.
As you see these here.
Number one: provide evidence of use.
Number 2: provide a claim of excusable
nonuse plus evidence.
That's a limited,
very limited circumstances. And number 3: just
delete the challenged goods and services.
If the registrant gives us
an acceptable response,
that can be one of those three:
evidence of use, excusable nonuse
that's accepted, or deletion.
Then the proceedings are over.
Now, what is the evidence of use?
The registrant must rebut the prima facie
case with documentary evidence of use.
The registrant can provide evidence supporting
excusable nonuse in limited circumstances.
This really only is for Section 44
Paris people folks or Section 66
Madrid registrants
in the context of an expungement proceeding.
So this is not routinely going to be used.
This is very, very narrow, excusable nonuse.
The third, you know, response option for
the registrant is, of course, is deletion.
If the registrant just deletes
in the context of the proceeding,
some or all of the challenged
goods and services,
it has immediate refect effect.
And we will terminate the
proceedings immediately.
Now what happens though,
if the registrant, the
response is unacceptable,
the proof of use is not accepted.
At that point the examiner will
issue a final action with another
three-month response period.
The registrant must respond with a request
for reconsideration and a notice of appeal.
Now in that request,
if that request for reconsideration
contains acceptable proof of use or deletion,
then again we're going to
terminate the proceedings.
Otherwise then the examiner's decision
to cancel can be appealed to the TTAB.
And the regular Board timelines apply.
All right, now we're going to get into
the the meat of what we've been seeing
as we've been working on these cases.
So. We implemented, as I said,
December 18th, 2021.
Since then we've received 58 petitions.
We have a working group that
meets twice a week.
This group includes nine high-level
Policy and Petitions attorneys.
So these are very experienced folks.
We review each petition.
We make a decision on whether to institute
a proceeding, pretty much as a group.
There are six "examiners."
These are these, you know,
very experienced folks. And four
policy supervisor types like myself.
I'm sitting in
on these meetings where we're
discussing each of these cases. Now
we will also bring in folks from
our Solicitor's Office and the
Trademark Trial and Appeal Board
on a regular basis to discuss
specific cases or suspension issues.
So there's a lot of interoffice
communication going on to try
to make sure that we are are,
you know,
handling these cases in in a
consistent manner.
We are working really hard to follow
the statute and follow the rules,
but we are also working really hard to make
sure that these proceedings are useful.
That is a delicate balancing act and
we are certainly finding our footing.
We've gotten a few questions and
suggestions about how to find
expungement/reexamination petitions.
So if you don't know the serial number,
how can you search for these proceedings
where a petition has been filed?
The short answer is there is no
searchable data field in TESS for
registrations where a petition for
reexamination or expungement has been filed.
Now you think,
oh,
just add a data field so we can
search it. Harder than you think,
harder than you think.
So what are our workarounds here?
The only place that an indication of
whether an expungement or reexamination
petition has been filed is in the
prosecution history. That's in TSDR.
But that's not really searchable.
So we added,
as you see on this slide here, we
added a spreadsheet of petitions
filed so you can find them easily.
Include, includes the mark for you.
It has a link to the TSDR record for
the registration. And it tells you
whether the petition was filed
for expungement or reexamination,
the date the petition was filed.
This spreadsheet is updated weekly so
when you are looking to see what has
been filed and go in to look at the record,
this is where you want to go.
Now though,
what are we going to do
in the future? Well,
this is exciting and this is a draft,
so it used to say draft on it,
but somehow it went away.
So this is an enhancement of our TMA
petition transparency initiative.
So this screenshot is a wire frame
of a future database, future database
that will contain several different
buckets of trademark decisions.
Now the first bucket that I think you're
going to be most interested right now is
is the expungement/reexamination decisions.
So these will be both the
notices of institution
and decisions by the examiner. And now
we also are going to create another
bucket for those administrative
sanctions decisions that I spoke about
in public webinars last year as well.
The third bucket would be
"Petition to the Director" decisions.
So if you want to see petition decisions,
that would be another bucket. And
then we're going to have another
one for precedential decisions.
Maybe we'll even do TTAB decisions in there.
Who knows, who knows.
But we are looking at a six-month
or more development process,
but I wanted to let you know
that we are trying to
advance transparency
here.
We want you to be able to
find these cases more easily.
Now you probably are familiar.
Remember I said we have our TMA webpage.
We have information about the TMA.
We have information that we provided last
year in public webinars where you can go
and and see the recordings from last year.
Now the new um the new information
on this webpage is under "Limitations
of proceedings" and "Best practices."
So these are some of the the lessons learned
that I'm going to share with you today.
We put on a webpage.
So it's already, you can just skip
this presentation and go to the webpage.
No. I want you to stay. Wait,
you're going to want to hear the questions.
But if you go to the webpage,
you'll see more lessons learned there
and we were going to keep trying
to add content there as we go.
So what you all came here to to to
find out is what are we seeing?
What are the common mistakes we're seeing?
So let's dive into that.
So what do we want?
What have we seen so far in petitions
that we want petitioners to stop
doing or just start doing. So
we want you to start doing the following.
Number one.
Start giving us an index of the evidence.
Make it a separate page. Label
the evidence with the petition
and match it to the index.
Exhibit A, Exhibit B. That will make
our life a lot easier trying to cross
reference what you're what you're doing.
What
what the evidence is supposed to go to.
What goods and services you are using
that evidence to show nonuse for.
Number two.
Start providing documentary
evidence for each search you do,
even if it's a negative search.
That is, "I did a search and I found nothing."
Tell us it's. Show us.
Give us documentary evidence of that.
Show us the null search results.
We want documentary evidence.
If. We don't want you to just
say, "I didn't find anything."
We want to actually have the
the web results that that show
that nothing was there.
OK.
What do we want you to
stop doing as petitioners?
Number one.
Stop shrinking the website evidence
when you screen grab it.
You should make sure we can
read the URLs in case we want
to create, recreate your search.
We've had some cases where it's just
shrinking the evidence so far down
we can't see it.
Well,
then we have to do, issue a 30-day
letter and you need to send
us that evidence back so we can
actually see what it says.
Remember,
though,
we need the legible URLs and we
need the dates of access.
They're required for webpages submitted
as evidence.
Would really appreciate that 'cause
your evidence doesn't do you any
good if we can't read it. Number two.
Stop providing only evidence of current nonuse.
Remember,
these are, these are proceedings
designed to get at past nonuse,
not current nonuse.
We'll get to that in a little
bit. I'll expand on that.
But current nonuse alone
is not going to work. Number three.
Stop providing evidence of one bad
specimen to challenge the entire class.
One bad specimen goes to those goods
that are shown in the specimen.
It doesn't go to the entire class.
You will need more than that
to challenge the entire class,
and we'll talk about that in a minute.
Number four.
Stop referencing other registrations
of the registrant without providing
the relevant portions of the record.
Don't just refer to these other registration
numbers and say something about them.
Give us the relevant portions that
you want us to look at of the
registration that you're talking about.
Number four, I'm sorry.
Number five.
Stop providing entire records of other
administrative or litigated proceedings,
rather than just the relevant portions.
We're getting lost in
these evidence data dumps.
And we may have to consider page limits.
So give us what you, specifically
the parts that you want us to
look at. If you give us a whole
proceeding with hundreds of pages,
I think the, your, the persuasiveness of
your your evidence may get a little bit
lost and you don't want that to happen.
All right.
Reasonable investigation.
The investigation is an element
of a complete application,
but it does not replace the need
for documentary evidence of nonuse.
Again, if you're, you know,
telling us that you did a search
and didn't find anything,
we want documentary evidence to
show that. You're just telling us
that that was your investigation,
but we need, we need actual evidence of that.
So provide evidence is the, of
the results of the investigation.
We've had affidavits of a nonuse
investigation and it was testimonial.
Basically,
testimonial evidence of the search,
but it did not give us the
documentary evidence that corroborates
that testimonial evidence.
So that's what we're we're looking for.
It's not enough to say you
didn't find any hits,
you really have to to give us evidence.
Uhm, for example,
a screenshot showing a search
for a subject mark on Walmart,
Target, Amazon returned zero hits.
You know we want that screenshot.
Screenshot showing a search of
the WayBack machine Archive.org.
That it returns zero hits.
That's showing no past use. That
that's really helpful.
We want to see that. We want to
know the time period covered by the
search that you did in Archive.org.
The evidence of nonuse as of the relevant
data is the key to a prima facie case.
So if you're just searching Amazon
and Google for current nonuse that
doesn't tell us that it wasn't
in use back in the relevant date.
So current nonuse is not going to be enough.
And here's here's a tip.
If the mark is a just a design-only element,
do a reverse image search and show
us the results.
Don't do a search of the company name.
You have to search the mark. And
so provide
us evidence of nonuse of the image
by doing a reverse image search in
in a search engine. That that would be
really helpful when we're talking about
a design-only mark. OK, next slide.
And I I've hammered this already
I'm sure. Current nonuse is not enough.
OK, we've gotten several petitions
with only an investigation of current
nonuse and document documentary
evidence of current nonuse.
But it doesn't establish by itself
a prima facie case of nonuse
as of the relevant date in the past.
But nonetheless we can consider
it as part of a larger body of
evidence as examiners are weighing
that prima facie case, weighing
the different pieces of evidence.
Next one. Original specimen.
So evidence that establishes
that a digitally altered specimen
that was originally submitted,
that can be prima facie evidence of
nonuse as of the relevant date.
We're following examination practice.
We're presuming that nonuse of that
good or service and the goods or
services in the scope of that ID that
was based on the digitally altered specimen.
We can presume nonuse
based on the the specimen.
So let me let me repeat that. So we get
we get a bad specimen,
evidence of a bad specimen.
It was digitally altered, mocked up, fake.
That bad
specimen will be enough to show us
that there was good evidence of nonuse
of the relevant date for the
good that's shown in that picture.
In that specimen. Or any goods that
could be covered by that specimen.
However.
That one specimen for that good
doesn't establish a presumption
of nonuse for the whole class.
That's that's the thing.
So examiners cannot presume nonuse
of the mark for the entire
class of goods and services based
on that one specimen.
We are aware that that
specimen was offered for. That
only one specimen was offered
for that whole class,
but we still can't institute
proceedings on the whole class
based on that one bad fake specimen.
And you gotta remember,
this is not a fraud proceeding. You know,
in fraud, if you have a tainted good,
it can take the whole class.
That's that's not what these
proceedings are designed for.
So lastly, uhm.
Moving to to
challenging the entire class. Now.
OK.
Let's say you have evidence, that digitally
altered specimen. You have a fake specimen.
You've got good evidence of the the the
specimen being digitally altered.
Now add to that.
Add to that. Evidence of current nonuse,
lack of U.S. presence of that owner,
lack of an internet presence at
all for the mark or for the owner,
particularly if we're talking
about consumer goods that are that
are typically sold online.
That as a whole may establish
a reasonable predicate of nonuse
as to the entire set of challenged
goods and services.
So if you just give us this bad specimen,
that's not going to be enough
to challenge the whole class.
You've got to give us more evidence
that raises a presumption, raises
an inference that that there is
nonuse on all of the goods and
services because the owner or the
mark is just not showing up anywhere
on the internet, in the WayBack
machine, anything like that.
We're looking for more. Alright.
I think I kind of already went over
this. Documentary evidence of nonuse.
If you want us to consider your evidence,
make it easy for us to to find it.
Index is great. Data dumps not great.
If you want to rely on the record
of a different registration,
don't just give us the TSDR entries.
Give us the relevant portions of specific
documents you want us to look at.
So for example,
if a maintenance document shows nonuse
or deletion of the goods at issue,
provide that document not just
the entire TSDR print out.
While we may, you know,
if you give us the TSDR print out,
we may go and and look into those
records without specific relevant,
you know, documentary evidence
there we we may go in and look at it,
but it's really at the examiner's discretion
about what weight to give that. Um.
So avoid giving us evidence in the record
that doesn't directly address nonuse.
Alright, now,
once we've reviewed the prima facie case,
whether it exists or not,
the reasonable investigation
in the prima facie case.
Then we decide whether to
institute proceedings or not.
We will only institute on the
goods and services for which a
prima facie case has been made.
Now, if we institute,
I think I said this earlier,
the registrant will get a notice
of institution and an office
action in one document.
The notice will include the petitioner's
evidence and requests the
registrant to rebut the prima
facie case within three months.
A one-month extension is available.
We have not received any
registrant responses yet,
so I don't have any lessons
learned to share with you on that.
We're only dealing with the
petitions and the notices of
institution or non-institution.
If the petition does not establish
a prima facie case of nonuse, we will
issue a notice of non-institution.
I know that sounds weird, right?
We're not calling this a decision.
These are not normal 2.146 petitions.
These are these are something different.
So we're calling this a determination,
not a decision. A determination
not to institute is not a denial.
Likewise, a determination
to institute is not a grant.
So we're not granting petitions or
denying petitions in this context.
We are instituting proceedings
or not instituting proceedings.
Now remember, the Director's
decision to institute or not is
non-reviewable.
So if the Director decides not to institute,
the Examiner will indicate that
the evidence was insufficient to
establish a prima facie case.
However,
the examiner will not provide
a detailed description of how
the evidence was insufficient.
And I'm sure that you all will
be frustrated that we're not
outlining in exhaustive detail
where the petition went wrong.
These notices are not designed to give
the petitioner a road map for appeal.
Remember,
there's no appeal of the
Director's determination.
So instead I would direct you
guys for perspective petitioners
to review the cases where the
Director instituted proceedings.
What was the search?
What was the evidence that
worked in those cases?
When you compare the different petitions
and the outcomes,
I think that will be instructive.
That's your road map for finding
the successful future petition.
Director-initiated proceedings.
Now we're in early days here and we know
neither the USPTO nor the petitioners,
knew or even still know what to
expect with these petitions.
So it makes sense that we've
gotten sort of test case.
We've gotten petitions where it
looks like they, we're being tested.
How little evidence can I provide
and still get the USPTO to institute?
Or, you know,
we've we faced a lot of deficient petitions,
right? We've faced cases where, you know, it
it seems like it's a fishing expedition, so.
A lot of these cases,
there's almost a prima facie case,
but just a better search would
have uncovered some more.
And we we discover that when we
do our search and we look at what
the petitioner's done and may need
a little bit more evidence. So
in those cases where is almost a
case but not a case, our examiners,
you know,
they they want to just add the evidence.
They can't.
They are not allowed to supplement a
an evidence to perfect a deficient petition.
That's not their job.
That's the petitioners' jobs.
So, you know,
we're in early days and we
recognize that we're sort of feeling
each other out here, you know,
with what's going to work in a petition.
So we actually have helped out
in at least one case.
And I think you'll probably
see that a bit more.
So in one case where the petition was
deficient, we actually issued a, you know,
we instituted
on the on the goods where
there was sufficient evidence.
We did a notice of non-institution on the
goods where there wasn't good evidence,
but then we turned around and
we issued a Director-
initiated proceeding to fill the
gaps in the original petition.
So where there wasn't enough evidence
for us to institute on the petition,
we then, our examiners, went and they
found evidence and basically just added
to it and initiated a Director-ordered
proceeding and and filled in the gap
that way. Now, if that happens repeatedly,
these will be really good cases for you
to look at because they show where the
petitioner went wrong and how the USPTO
determined that a prima facie case
should have been established because
we went ahead and filled in those gaps.
But. Please do not rely on the USPTO to
institute Director-initiated proceedings on a
registration for which you filed a petition,
but you didn't provide enough evidence.
We cannot save your petition in every case.
That's a lot of resources.
So as our registrants' responses start
coming in or we find our own Director-
initiated proceedings to to work on,
we're not going to be able to spend
a lot of resources supplementing,
you know, deficient petitions by by adding
on parallel Director-initiated positions.
So so keep that in mind.
Don't don't rely on us to clean
up or find the evidence that you
didn't go after on your own.
We we are going to get stretched for
resources pretty quickly as responses come
in and we want to make sure we're able to
be consistent in how we're
treating these things. OK.
Uhm, suspensions.
Let's talk about that briefly.
'Cause we get, we do get questions on this.
If you recall,
in the rule it provides that expungement
and reexamination proceedings can be the
basis for suspension of related proceedings.
And that means that if the same registration
that's at issue in a TMA proceeding
is the subject of civil litigation,
the TMA examiner may suspend
those proceedings upon request
and if otherwise appropriate,
if civil litigation relevant
to that registration
is ongoing.
So, you know, we we can suspend our
proceedings based on the civil litigation
if you ask us and otherwise it's appropriate.
Now the same is true if the same,
the registration is the subject
of a proceeding at the TTAB. Either
proceeding may be suspended,
the tee,
the Board's proceeding may be to
suspend it or the TMA proceeding
may be suspended as appropriate,
whichever is is deemed to be
necessary to make sure that we're
we're handling the case properly.
As I said before,
remember TTAB folks are coming to our TMA
working group meetings.
So we were talking about those
suspensions and when to do that.
So there's a lot of communication going on.
Now if a registration is relevant,
if the registration and a TMA
proceeding is relevant to a Section
2(d) cite in examination or it's the
subject of a maintenance filing,
examining attorneys and
post-registration staff
may suspend on their own initiative
or upon request, examination
while relevant TMA proceedings are ongoing,
if otherwise appropriate.
So again,
there's lots of different proceedings
where the same registration may be
relevant and the the suspension rules
that you normally that you're used
to at the Board they apply here.
So we can suspend examination here
or here depending on what you need.
So that is contemplated by the rules.
Few more things.
Section 7 request for amendment.
We actually already had a case where
a Section 7 request for amendment to
narrow an identification of goods and
services was actually pending prior
to the filing of the TMA petition and
it was relevant to the TMA petition.
So once the TMA examiner realized that
the Section 7 request was outstanding,
she asked the post-registration
unit to expedite the processing
of it, of the registrant's request.
So we were actually able to issue
a notice of non-institution
because the registration had had been
amended by way of that Section 7 request
to narrow that identification of good
and services and moot the TMA proceeding.
So in that case,
the petitioner probably should have checked
to see if there was a a Section 7
request pending already because they
would have saved themselves $400.
So again,
I I think I've raised this in the past.
Please clean up your registrations,
anything that you're not using the
mark for the goods and services,
do a Section 7
request for amendment before you
get subject to a TMA proceeding. And
so you don't get dragged into one of
these proceedings. Clean up your registration,
eliminate the goods and services out of
your registration that are not in use.
It is a zero fee.
We will not charge you when you're
deleting goods and services out of
the from the Section 7 request.
Uhm.
Again,
I I think I I talked about this earlier,
but I just want to go over it one more time.
Deletions.
You can again file this Section 7
request to amend the registration and
delete the goods before you even get
pulled into one of these proceedings.
Or you can do it while you're in
the proceeding if you want to.
The registrant can just respond to that
TMA office action by requesting deletion
of the challenged goods and services.
It's an easy way to just get out of
the proceeding and and just delete
the unused goods and services.
The registrant could decide not to
respond to the office action and let
those goods and services just fall away.
They'll they'll just be automatically
cancelled so the registrant could just
ignore the office action and let
them, let those those unused goods go.
But however. If the deletion, the
the the examiner requires deletion
in the office action for the TMA,
if that happens simultaneously while
the same registration is in in the
middle of a maintenance examination,
including an audit,
there's a $250 deletion fee
penalty.
So to the extent that it, within
the maintenance examination,
the goods there are goods and services
that are required to be deleted
in response to an office action.
There's a $250 deletion fee
penalty. If that happens
at the same time you're in a TMA proceeding,
you're going to have to pay that penalty.
Just, you know, you can't get out of it
by virtue of deleting within the TMA.
We're not going to double charge you,
but you can't get out of it simply because
you're in a different proceeding where
you're deleting goods and services.
Now remember,
if you don't pay that deletion fee penalty,
the entire registration is cancelled.
It's not just the goods and services
that are at issue, it's the entire thing.
So keep that in mind.
That deletion fee is a penalty and
it's designed to make sure that
that folks are keeping their
registrations as accurate as possible.
Now we're learning a lot about
these proceedings and and it's the
the people who are working on it
actually really enjoy it because
it's it's high-level thinking.
It's policy making on every single petition.
We're learning a lot.
We've got some,
some unexpected petitions coming
in that we we didn't think were,
we didn't really contemplate.
But, you know, they they work.
They're working in the context of
these proceedings. We had a
for example,
we had a petition that alleged
nonuse in interstate commerce.
There was clearly use in
intrastate commerce,
but the petition offered evidence
of of nonuse in interstate commerce.
It was good prima facie evidence.
So we instituted proceedings.
Another fact pattern that arose was where
the original specimens submitted
during examination did not show
use in commerce for this specific
goods identified in the application.
So obviously the original examining
attorney just missed the issue that
the the specimen didn't match the ID.
But now we have an opportunity
to fix that mistake,
since the petitioner brought it forward.
So we're going to do that. This this
is this is to fix our mistakes.
That's reexamination. Another variant
of this kind of case was where
the specimen that was originally
submitted identified a website
that never actually existed.
And these were the kinds of goods that
typically would be sold on a website.
So defects in the original
specimens submitted are something,
we will look at carefully to determine
if a prima facie case is made
for the goods and services that
the specimen was supposed
to originally support.
So again, you know,
these were unexpected, but
it's perfectly contemplated within the
statute and we're happy to go with the
flow and and make these proceedings
work for a bunch of different fact patterns.
So that's really what I wanted
to to cover today.
Certainly we've got questions coming,
but I do think we'll probably need
to get together again in the future
to discuss again how these petitions
are going and what we're seeing.
But in the meantime for,
you know, up-to-date information,
follow our webpage updates.
Look for our improvements to
and transparency to make sure that you
see these petitions and see our decisions.
We really did a lot of work with you
all, with your help, to make these
proceedings available and certainly
if no one is interested in them
because they don't operate the
way that everyone thought, that
that's not in anybody's interest.
So we really do want to make sure
these work and and we're we're happy to
continue to to work with you all to do that.
So let's stay in touch about this
and I would like to take your
questions at this point.
I believe we have a number of questions.
So we will
go back to the beginning and Bob and
Montia will help me as we go through.
OK.
So we have at least four questions so far.
So the first question is. A TMA
costs $400 and requires a verified
statement of reasonable investigation
and documentary evidence.
It would probably take more than $200
worth of time to put this together.
A cancellation petition costs
$600 and does not require the
same investigation or evidence.
That seems like much less work
to file a cancellation petition.
Why would anyone file a TMA proceeding,
I guess?
And I think the answer to that
question and and I have not
practiced before the Board,
but I do think that anyone who's
filing a petition for cancellation
has obligations under Rule 11,
if I'm not mistaken,
37 CFR Rule 11 to make sure that
anything that they filed there
is supported by investigation and
was not filed for improper purpose.
So we weren't not, necessarily trying to
require more than required in a
petition for cancellation at the TTAB.
Really that the same thing is required.
So I I I take issue with the question
that I I don't think that the
requirements are any different for a
nonuse cancellation petition filed
at the Board versus a TMA petition.
And presumably you would file a TMA
petition because you don't want to
necessarily pay, take the chance of
not getting a default judgment and
you want to avoid attorneys fees if
perchance there is no default
judgment and you are proceeding
through litigation before the Board.
The other point to make is and a
default proceeding, default judgment
at the Board can be very quick,
but again it's a risk.
With with our proceedings, we're hoping
to get these faster and faster as we get
used to them and hopefully they will,
you know, facilitate mark clearance.
The idea being you find a mark that
you want to get off the register,
you believe you've done your investigation,
you have documented evidence
nonuse, and you want that gone
so it no longer blocks your
application. And these proceedings are
intended to allow you to do that
more quickly than a regular Board proceeding.
Again, default judgment can be very quick.
It's a choice you have to
make which way you want to go.
And remember at the TTAB it's
a $600 petition fee.
You can get a refund if there
is a default judgment.
Which comes out to the same
price as a TMA proceeding.
That was kind of intentional.
So that is the first question. OK.
Is there anything you want to add
Bob or Montia on that one? -I yeah.
I mean I think that's, that's it,
it's the
it's part of it is strategic and tactical, right?
What do you think is going to be the
result if you file a petition with the Board.
Are you likely to get a default?
Then maybe it's a it's a wash. And then
the other issue of course is these TMA
proceedings are limited only to use,
whereas petition to cancel before
the Board has many possible grounds.
And then there's also the idea
of who has the burden when you
when you file these.
Here,
you're effectively filing your petition,
and then if it's instituted,
the burden is on the registrant to prove use.
Whereas in a
petition to cancel before the
Board that goes forward,
it could get much more complicated and
the burden might be on the petitioner.
-Anything about rule 11 that you want to say?
-Yeah, there shouldn't be any
difference there, right?
I mean it attorney making a filing a,
you know, establishing prima facie case
of nonuse, it's going to be the same
level of of work I would think and
possibly more with the petition to
cancel before the Board but that's
you know, conjecture on my part.
I think that practitioners out
there would have a better idea of
the amount of work involved there.
-Fair enough. OK.
Next question,
can one bring a TTAB cancellation
proceeding after bringing an unsuccessful
expungement or reexamination proceeding?
Yes, there is no estoppel with regard to
TMA proceedings that are unsuccessful.
So certainly that petitioner or
real party in interest can go to the
Board and challenge the registration
for the same reasons.
There is no estoppel, no no claim preclusion.
So great question.
Thank you for raising that.
Is expungement 10-year limit
waiver really until December 2024?
Oh, you are correct, sir.
It's a typo. I am sorry.
Yes, so TMA passed in 2020, December 2020.
So there was a three-year period for
expungement to be available at any
age over three years and that would
end, math is not my strong suit,
sorry that would end on 2023.
So questioner,
I really appreciate that. We'll
have to we'll have to fix that.
My my bad very sorry about
that. You are correct.
Uh, next question, how much does it cost
to file one of these? $400 per class.
How long does it take?
It depends on how quickly everybody moves.
They're designed to take somewhere around,
well they can be,
they could be as fast as a three months.
They may hopefully take no more than
six to seven months, but you know,
as we're still finding our footing, it it's
taking us awhile to sort of figure out,
you know, work through these cases
and making sure we're making the
appropriate institution decisions.
Now the registrant has three months,
extendable another month to
respond to the first action.
So a lot depends on how quickly the
the registrant will respond as to
how quickly these proceedings will go.
But the idea that we were shooting
for was somewhere between
six and nine months,
if it all, you know,
extensions and and the full
time was taken for everything.
What are the risks to the filer?
Um to the risk to the petitioner.
$400.
Anything else on that, Bob?
-Well, I mean it's like anything else,
right?
When you bring up an action
potentially affecting someone's rights,
then I think the practitioners out there
have to consider the potential litigation
risks that might arise from that.
Right.
So if there's dueling registrations and
obviously that could be a trigger to
some sort of counterlitigation in
another venue or, you know, potentially,
that party filing a petition
against the petitioners
uh
registration, right?
So, but that's it's not really
within the scope of this, this is
again, that's more of a
practitioner's consideration.
-That's not our lane. -Right.
-Yep.
-Got it.
OK.
Next question.
Has the USPTO set a time benchmark
for how quickly it would make an
institution decision on a petition?
How about how benchmark for how quickly
it will act on an office action
response from a registrant overall.
Can you forecast how quickly the USPTO
will turn around these two items?
No.
I would like to. Certainly we're
moving as fast as we can.
So it's it's a function of not knowing how
many petitions we were going to receive,
how many examiners we would need to
to pull in to deal with these cases,
how complex the cases are in trying
to make institution determinations,
how much research will the examiner
need to do to check up on the
investigation done by the petitioner.
So there's lots of different
variables and we don't have enough
experience to be able to say,
"This is how long it's going to take.
It's going to take two weeks.
It's going to take one month."
When we have more experience,
I think I'll be able to benchmark it.
Uhm, but I I can't really do that right now.
I don't think it's it's reasonable.
I don't think it would be a
good prediction as to how long
these things would would take.
So obviously we don't want to be,
we don't want to be slow.
We want to move these
things as quickly as we can.
That's the whole point of these proceedings.
So as I said, we're trying to make
sure we balance the interest there
because we have done a whole lot of
work in trying to set these proceedings
up and making them work and they
need to work and we know that.
So we will do everything we can to
try to move things along to make
them valuable to our stakeholders.
And so at this point,
I can't give you a benchmark,
but maybe in six months, maybe in a year,
I'll be able to well, six months.
I might be able to give you a benchmark.
So let's get back together next year or
in six months and then I'll tell you. OK.
If submitting WayBack machine evidence,
does it have to be certified? No.
Uhm, we just need the dates that
you, the search covered.
We need the URL.
We need the date it was accessed.
And that's normal
normal type of documentary
evidence that we're looking for.
We're not looking for anything certified.
Is that right, Bob?
-Yeah.
And the entire petition is submitted
under a verified statement and
subject to 18 USC 1001 and Rule ll.18.
So again, you know,
you have to do your homework on these
and you're certifying that what
you're submitting is true and
that there's a reasonable basis for doing so.
-Yep.
Next question. Is the prosecution
history of the challenge registration
automatically in evidence?
That's a great question.
We've had this debate. Yes.
You know,
if if it's the challenge registration,
everything you know is is. We can rely,
we can,
we can look at anything in that registration.
But I will say. If you want us to
see something in particular, if
you want to draw our attention
to something in particular,
give us that relevant evidence.
If you, if it's buried inside a whole file,
we may miss it.
So certainly we are looking at the
whole prosecution history for the most part,
but if there's something that's
really important to your case,
please bring it to our attention
by submitting that separately.
That would be really helpful.
Anything to add?
OK. Next. Will an examiner
suspend an application pending
expungement or reexamination of
a registration cited as a basis
of refusal for that application?
Yes. Bob saying "Yes."
OK. -They're talking about, yeah.
-The 2(d) cite, right? -Normal
2(d) cite in normal examination.
I think when they're saying
"examiner" they're saying "examining attorney" not
a, not the expungement examiner.
Right. So. -Yep, exactly.
So just a nomenclature.
Again, remember we're not, these are
not petitions under 2.146. There's
not, they're not decisions. they're not
grants. We are calling these TMA
examiners "examiners," not "examining
attorneys." Trying to differentiate.
So we're being kind of careful in
our nomenclature just to try to
keep it all straight in our head.
OK, is there any limit to how often
and how many times these can be filed
by either the same or different filer?
Uhm, yes.
Well, against the same registration.
OK, let's talk about estoppel a little bit.
So under under the TMA,
once a a registration has been
challenged and specific goods and
services have been challenged,
and it survives,
the registrant is able to
produce evidence of use,
and we terminate the proceedings.
Those specific goods and services
that survived cannot be challenged
again in a in a Director, in a
proceeding before the Director.
Like I said before, you can go to the Board,
you can challenge them there,
but you can't keep filing serially against,
though, you know, one specific good or service.
If it survives, it's, there's estoppel.
Now you can challenge the same registration.
So theoretically you could, you know,
a petitioner could file against one
good and that good, you know, survives.
Then the petitioner files another
one against the next one.
Now, if we find that this happens,
we will then consider rulemaking to
stop that from happening. Right now,
we,
as we went through the rulemaking process,
we decided not to put any limits on the
amount of time a registration could
be challenged or the amount of time a puts,
a particular petitioner could
challenge numerous registrations,
but we're watching. To the extent that a,
one petitioner keeps filing against a
bunch of different registrations and the
cases don't appear to be meritorious,
we will note. That information will
go to our special task force and
we will start investigating the
petitioner to see if they are filing
for improper purposes under Rule 11.
If the petitioner starts,
is filing for improper purposes,
then we can proceed against that
particular person with sanctions. And
we can preclude them from filing
any further petitions. We can block
their USPTO.gov account so they can no
longer file anything before the USPTO.
So to the extent that somebody uses
these proceedings to harass registrants,
we will note it and we will,
we can deal with it through our
sanctions program. So keep that in mind.
But it's already baked into the system
that if a particular good has been
challenged and survives the challenge,
it can no longer be challenged
by somebody else.
Ever. Within the Director's sphere,
the Director proceedings. Again,
it can go to the Board.
OK did that. Was I clear on that?
Alright, good enough. Let's hope.
OK. Can a petitioner be anonymous in
the petition and request suspension
in an application where it is the
applicant and a 2(d) refusal was issued
re: the petition registration. Yes.
Right. 'Cause it's the
same registration, right?
So yeah, so petitioner can always
be an anonymous in the sense that
it's not the real party in interest.
It's just a person's name.
You can't be totally anonymous.
You have to give us your name.
You have to give us your address.
You have to give us your email.
So you're a person.
You have to have a USPTO.gov
account and with ID verification,
we're going to know who you are. Now
are you the real party in interest?
Not necessarily.
When we did not deal with,
we did not address that issue in the
rulemaking because at the end of the day,
if there's a prima facie case,
we should institute proceedings.
Doesn't matter who filed it.
If it's meritorious, we should
we should clean up the registration.
Absolutely.
OK, so if a petitioner
files, but a different person
is asking for suspension
within within examination, right.
Because the the relevant
registration is at issue, then yeah,
that seems. Is that right, Bob?
We might have to take that back,
but I think that's right.
-Yeah, it, I, I get that I.
My understanding the question
is: the petitioner has filed
against a registration. And that
registration is also cited against
the petitioner's application.
So the petitioner wants us to decide
the petition before proceeding with the
application where there was a 2(d). I yeah,
I don't think we've talked about that,
but that seems like normal
suspension procedure.
Yeah, I mean, I don't think there's
anything improper there. -Right. OK.
Is there a limit to how often and
how many times you can be filed?
I just answered that. Alright.
Is that our last question?
-Alright, let's see.
Do we want to switch over to
the new category 'cause not all
of them have been published.
It looks like. Yeah, I see that.
OK, well,
-Well, we're getting very close to the
end and we do have to shut it down.
But there is one question that
came in and I understand, Amy,
you might have been thinking about
addressing it today and it's one we
can do pretty quickly. And that is
what sort of an investigation is needed
if a trademark is a design-only trademark.
Is there anything like a search
that might be deficient?
And what would you be looking for
in that circumstance? -I would.
You gotta look for the design.
Um,
you can't just look for the registrant
or the company name of the registrant.
You have to actually look for
the mark at issue.
So to the extent that a
reverse image search within,
you know,
various online sites would be helpful to show
that you actually did search the design,
that's kind of kind of necessary
for instituting a proceeding against
the design-only mark.
So just doing a search of the
applicant's name is, or the registrant's
name is not going to cut it.
You actually have to be looking
for the mark at issue.
If it's a design-only mark, we
recognize that's challenging,
but Google has this great reverse
image search feature.
So I would I would urge you to try that.
-Excellent.
Alright.
Well thank you very much.
I'm sorry that we're going to be
unable to get to all of your questions today.
There were there were a lot of
you who tuned in for this webinar,
so unfortunately we're not going to be
able to get to everyone's question,
but thank you so much for being
here and thank you so much for
sending in your questions.
For those of you who want a replay,
don't worry, there will be.
So the recording for this should
be posted, as I mentioned at the
beginning of the webinar, it should
be posted within about three weeks
from now. And there's lots of great
information that we have on the
website, as well, so be sure to check
out everything that's up there.
Specifically interested in the
Trademark Modernization Act?
Or if there are other things
that you're interested in,
we have all sorts of events that
are always happening at the USPTO.
I know that we have a Women's
Entrepreneurship Symposium
coming up later this week,
and if you're someone who wants
to learn more about patents,
we have lots of patent information.
There's also one about trade secrets
I believe coming up next week.
And of course,
we also have our Trademark Basics Boot Camp.
A lot of you on the call today are
are well advanced beyond the basics,
but for those of you who might have
tuned in and might be looking for
some basic trademark fundamentals,
be sure to check out our Trademark
Basics Boot Camp.
And we also have a similar program
if you want to learn patent basics.
It's called the Path to a Patent program,
and both of those eight week
courses begin next week.
So thank you again for being here.
We appreciate your time and
we will see you next time.
Thanks so much and take care.