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-We are very pleased to present our

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webinar on "Insights into nonuse

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cancellation proceedings" at the USPTO.

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And our speaker today is Amy Cotton.

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She's the Deputy Commissioner for

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Trademark Examination Policy at the

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USPTO and in this role she oversees

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the Office of Trademark Policy,

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Petitions, and ID class. As well as

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the Trademark Assistance Center,

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the Office of Trademark Quality

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Review and Training,

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the Trademark Law Library,

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Customer Experience, and Trademark Outreach.

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So Amy is certainly somebody who knows

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a lot about what's going on at the

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USPTO. At the end of the presentation,

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when we get into the question-

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and-answer session,

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she's going to be joined by two experts.

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One is Montia Givens Pressey.

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She's the Senior Attorney in the Office

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of Trademark Quality Review and Training,

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and also a legal liaison to

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the Post Registration Unit.

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And also Bob Lavache.

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He's the Senior Trademark Legal

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Policy Advisor in the Office

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of the Deputy Commissioner for

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Trademark Examination Policy.

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Well, with that,

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I'm going to step away

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and turn it over to Amy.

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Who's going to talk you through some insights

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into the Trademark Modernization Act's

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nonuse cancellation petitions.

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-Thank you, Jason.

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Good afternoon everybody.

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It's really nice to see you again.

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It's been awhile since we've gotten

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together to talk about the TMA.

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If you recall,

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last year we got together a few times

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as we went through the rulemaking

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process and worked through how to to

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develop, with your help, these proceedings.

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So now we have these proceedings.

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We implemented those on December 18th,

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2021 and I thought you might

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like to know how they're going.

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And they're going pretty well.

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A couple of things. I wanted

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to share our experiences

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with you so far,

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because I bet they will: number

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one, help you decide about whether

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to use these proceedings and we

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want you to use these proceedings.

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We did a lot of work on them with you,

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with your help. And number 2:

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we want you to prepare more

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successful petitions because I think

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that's what everybody would like.

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So let's advance here.

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So level setting though. A couple

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of questions that came in,

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wanted to make sure that everyone knew

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where we were starting with the TMA.

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So we're going to actually start and I'm

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going to outline the proceedings for you.

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So the the TMA proposed new proceedings

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to cancel registrations for nonuse.

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This was to facilitate mark clearance,

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get unused registrations off of the

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register more quickly and this is a

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new mechanism by which to do that

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without having to go to the Board.

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Now the first proceeding that Congress

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laid out for us is expungement.

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Expungement, the target of these proceedings,

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is a mark in a Section 1, 44, or 66

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registration that has never been used

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on on some or all of the goods or

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services identified in the registration.

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Now there are three types of proceedings

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where this new claim or this ground

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for cancellation is available.

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One is the petition-initiated initiated

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proceeding before the Director. Another

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one is a Director-initiated proceeding.

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And the third is a cancellation

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proceeding before the Trademark

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Trial and Appeal Board.

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Let me be really clear 'cause I realize

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there's probably some confusions based

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on the title of the presentation.

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I'm only addressing the

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proceedings before the Director

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today. I'm not talking about the

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Trademark Trial and Appeal Board.

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That's that's not the focus

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of my presentation.

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It's really how these petitions

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before the Directors are going.

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So I apologize for anyone who was tuning in

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for more information about TTAB petitions,

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but I am not going to be

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addressing that today.

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Expungement. An expungement

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proceeding before the Director may

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be instituted in the window of time

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between year three and ten years

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after the registration issues.

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So Congress, though,

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provided an exception for this three

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year period from TMA enactment,

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which was December 2020.

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Any three-year-old registration can be

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subject to an expungement proceeding.

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So for the next little less than two years,

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any registration can be attacked for

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expungement through these proceedings.

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You got it. Two year window left

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in order to do that.

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That was designed to try to get

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some of these older registrations

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that were unused and just taking

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up space on the register off.

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So if you have a registration

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that's been sitting there,

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that's over 10 years,

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you can use these proceedings

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to get at those for for the for

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the next year and a half or so.

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Now I want to be really clear

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about expungement.

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It is an entirely new statutory

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basis for cancellation.

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It only evaluates whether the mark

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was used on the challenged goods and

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services prior to the date of the

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filing of the expungement petition.

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It's not abandonment.

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It's not an abandonment claim.

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The registrant's intent to resume or to

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commence use is just not relevant. For that

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you have to go to the Trademark

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Trial and Appeal Board.

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Furthermore,

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expungement does not evaluate whether

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the mark was put into use as of

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the dates required by the statute.

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That is a question

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for reexamination, which we're going to next.

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So the second proceeding that

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Congress created before the Director

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is called reexamination and the

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target of these proceedings is a

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mark in a Section 1 registration.

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Hold on one second.

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Uhm, the target of the proceedings

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is a Section 1 registration that was

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not in use as of the relevant date.

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So what's the relevant date?

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Relevant date for the purposes of

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a 1(a) registration is the filing

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date. The relevant date for the

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purposes of a 1(b) application?

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A 1(b) application would be the later of the

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filing date of the AAU or the expiration

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of time to file the Statement of Use.

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So the filing date of the Amendment

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to Allege Use or the expiration of

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time to file the Statement of Use.

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Now, a petition to request institution

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of reexamination may be filed in the

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first five years after registration.

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Alright, next slide here. The elements of a

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complete petition are are here on the left.

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Any person may file a petition.

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The filing fee is $400 per class.

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We need the petitioner's

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name, domicile, and email.

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If it's foreign-domiciled,

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the petitioner must provide a

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designation of a U.S. attorney.

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And if represented, the attorney name,

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postal address, email address, and

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bar information must all be provided.

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Now the petition and the evidence are

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immediately uploaded into the Trademark

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Status and Document Retrieval (TSDR) system.

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A courtesy email notification

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is sent to the registrant and

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the registrants attorney, as appropriate.

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Now, what should the petition include?

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The elements are all here.

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Verified statement and

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documentary evidence of nonuse.

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The verified statement must lay out the

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elements of the investigation for nonuse.

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Where did you search?

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How did you search?

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When did you search? And what did you find?

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As to each source of information relied on.

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Now that reasonableness of the search and

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the number and the nature of the sources

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the petitioner must search

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will be determined by

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case by case 'cause

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it depends on the industry.

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Once a complete petition is filed

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and has all of the required elements,

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a courtesy email notice of the

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filing of the petition will go to the

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registrant and the registrant's attorney.

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Now if there is an element missing,

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we will consider whether to issue

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a 30-day letter allowing the

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petitioner to perfect the petition.

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And we are most likely to issue a

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30-day letter if the Director is

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going to institute a proceeding.

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It doesn't make sense to issue the

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letter if we're not going to institute.

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So that would be a waste of time.

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Now the 30-day letter provides

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the petitioner an opportunity to

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clarify the evidence of record and

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the elements of its investigation.

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Clarifying statements in the petition,

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providing a legible URL,

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a date of access,

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or a legible copy of the evidence.

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But no new evidence will be accepted.

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So this is just to clarify some of

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the things in the petition that that

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may not make sense to the examiner.

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The number one thing I'm going

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to specifically note right here:

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index. Index of the evidence. We need

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the index. We need to know what

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evidence goes to which piece.

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So if you don't provide it in the petition,

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you will, we, you will be delaying

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consideration of your evidence while

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we issue a 30-day letter asking for it.

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So index is is pretty important here.

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The index for evidence needs to be

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a separate page and it should link

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to your evidentiary exhibits.

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So we'll get back to that in a little

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bit. Also be really clear with the

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specific goods and services you

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are challenging.

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We've had cases where a petition identifies

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all the goods and services in a class,

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but the evidence only goes to

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one of those items.

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So be clear what your evidence

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is supposed to provide

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evidence of

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nonuse, which goods and

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services your evidence

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is providing

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the nonuse prima facie case.

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Uhm. Once the petition is filed,

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there is no withdrawal available.

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So if the prima facie case

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is made in that petition,

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the Director must institute.

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So consider that. It's not, you know,

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if you, if the two parties want to

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settle, that's that's your business.

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But we're not going to allow the

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petition to be withdrawn at that point.

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Because if there is prima facie case,

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a prima facie case of nonuse,

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we want to address that. We we have an

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00:09:20,046 --> 00:09:22,516
interest as the USPTO to making sure that

281
00:09:22,516 --> 00:09:24,629
the registrations we issue are accurate.

282
00:09:24,630 --> 00:09:26,178
That we've already issued are accurate.

283
00:09:30,510 --> 00:09:35,010
Alright, sorry I'm getting some questions.

284
00:09:35,010 --> 00:09:38,090
Uh, and for some who are asking what

285
00:09:38,090 --> 00:09:40,572
are Sections 1, 44, and 66 registrations.

286
00:09:40,572 --> 00:09:43,531
A Section 1 registration is one that

287
00:09:43,531 --> 00:09:46,285
was based on use or intent to use. A

288
00:09:46,365 --> 00:09:48,843
Section 44 registration is one that

289
00:09:48,843 --> 00:09:51,298
was based on a Paris Convention filing.

290
00:09:51,298 --> 00:09:54,091
And a Section 66 registration is one

291
00:09:54,091 --> 00:09:56,656
that was based on the Madrid system,

292
00:09:56,660 --> 00:09:57,968
the Madrid Protocol.

293
00:09:57,968 --> 00:10:00,584
So those are generally foreign

294
00:10:00,584 --> 00:10:02,657
incoming applications that have

295
00:10:02,657 --> 00:10:05,247
filed via treaty mechanisms into

296
00:10:05,250 --> 00:10:08,040
the United States. OK.

297
00:10:10,210 --> 00:10:12,730
Got too many screens going.

298
00:10:12,730 --> 00:10:14,430
OK, so this is again,

299
00:10:14,430 --> 00:10:16,380
this is just an overview because

300
00:10:16,380 --> 00:10:18,236
there is a a presentation that

301
00:10:18,236 --> 00:10:19,988
I did many times last year.

302
00:10:19,990 --> 00:10:21,838
It's posted on our webpage that

303
00:10:21,838 --> 00:10:24,112
explains TMA and explains these nonuse

304
00:10:24,112 --> 00:10:26,248
cancellation proceedings and how they flow.

305
00:10:26,250 --> 00:10:28,413
So we're really just doing an overview

306
00:10:28,413 --> 00:10:30,824
right now to set the stage for what we

307
00:10:30,824 --> 00:10:32,830
have been seeing in the way of petitions.

308
00:10:32,830 --> 00:10:34,576
So if you need more information

309
00:10:34,576 --> 00:10:36,210
about TMA proceedings in general,

310
00:10:36,210 --> 00:10:38,172
I urge you to go to our TMA page

311
00:10:38,172 --> 00:10:40,215
which I will show you the link for.

312
00:10:40,220 --> 00:10:41,684
And you can you can review

313
00:10:41,684 --> 00:10:42,416
the information there,

314
00:10:42,420 --> 00:10:45,036
which lays out the basics of the proceedings,

315
00:10:45,040 --> 00:10:47,648
and there is a slide deck there and

316
00:10:47,648 --> 00:10:49,439
a recording of the presentations

317
00:10:49,439 --> 00:10:51,563
that I made last year which

318
00:10:51,563 --> 00:10:53,618
has it all laid out for you.

319
00:10:53,620 --> 00:10:54,710
But again,

320
00:10:54,710 --> 00:10:56,890
let's refresh. A petition-

321
00:10:56,890 --> 00:10:57,980
initiated proceeding.

322
00:10:57,980 --> 00:10:59,785
The workflow goes like this

323
00:10:59,785 --> 00:11:02,210
that you see on the screen.

324
00:11:02,210 --> 00:11:03,660
Once the petition is submitted

325
00:11:03,660 --> 00:11:04,530
and it's complete,

326
00:11:04,530 --> 00:11:06,329
the petitioner is out of the process.

327
00:11:06,330 --> 00:11:08,087
This is not an inter parties case.

328
00:11:08,090 --> 00:11:11,270
This is now between the the

329
00:11:11,270 --> 00:11:13,390
registrant and the USPTO.

330
00:11:13,390 --> 00:11:15,616
It is the Director who decides whether

331
00:11:15,616 --> 00:11:17,862
the prima facie case is made based

332
00:11:17,862 --> 00:11:19,704
on evidence and information in the

333
00:11:19,763 --> 00:11:21,652
petition and the USPTO's electronic

334
00:11:21,652 --> 00:11:24,057
record of the involved registration.

335
00:11:24,060 --> 00:11:25,859
If a prima facie case is established,

336
00:11:25,860 --> 00:11:27,756
I said this before, the insti-- the

337
00:11:27,756 --> 00:11:29,020
Director must institute proceedings.

338
00:11:29,020 --> 00:11:31,774
We need to take a look at this registration.

339
00:11:31,780 --> 00:11:33,640
If a proceeding is instituted,

340
00:11:33,640 --> 00:11:36,223
the examiner will issue both a notice

341
00:11:36,223 --> 00:11:38,518
of institution and an office action.

342
00:11:38,520 --> 00:11:40,674
The same document. It directs the

343
00:11:40,674 --> 00:11:42,443
registrant to respond within three

344
00:11:42,443 --> 00:11:44,563
months with proof of use of the mark

345
00:11:44,563 --> 00:11:46,777
on the challenged goods or services.

346
00:11:46,780 --> 00:11:49,105
Now there are three options

347
00:11:49,105 --> 00:11:51,430
for the registrant to respond.

348
00:11:51,430 --> 00:11:52,470
As you see these here.

349
00:11:52,470 --> 00:11:54,654
Number one: provide evidence of use.

350
00:11:54,654 --> 00:11:56,985
Number 2: provide a claim of excusable

351
00:11:56,985 --> 00:11:58,589
nonuse plus evidence.

352
00:11:58,590 --> 00:11:59,961
That's a limited,

353
00:11:59,961 --> 00:12:02,703
very limited circumstances. And number 3: just

354
00:12:02,703 --> 00:12:05,630
delete the challenged goods and services.

355
00:12:05,630 --> 00:12:07,785
If the registrant gives us

356
00:12:07,785 --> 00:12:09,078
an acceptable response,

357
00:12:09,080 --> 00:12:10,648
that can be one of those three:

358
00:12:10,648 --> 00:12:12,099
evidence of use, excusable nonuse

359
00:12:12,099 --> 00:12:13,559
that's accepted, or deletion.

360
00:12:13,560 --> 00:12:16,030
Then the proceedings are over.

361
00:12:16,030 --> 00:12:18,110
Now, what is the evidence of use?

362
00:12:18,110 --> 00:12:21,029
The registrant must rebut the prima facie

363
00:12:21,029 --> 00:12:23,388
case with documentary evidence of use.

364
00:12:23,390 --> 00:12:26,156
The registrant can provide evidence supporting

365
00:12:26,156 --> 00:12:28,950
excusable nonuse in limited circumstances.

366
00:12:28,950 --> 00:12:31,694
This really only is for Section 44

367
00:12:31,694 --> 00:12:34,420
Paris people folks or Section 66

368
00:12:34,420 --> 00:12:35,398
Madrid registrants

369
00:12:35,400 --> 00:12:37,346
in the context of an expungement proceeding.

370
00:12:37,350 --> 00:12:39,933
So this is not routinely going to be used.

371
00:12:39,940 --> 00:12:41,932
This is very, very narrow, excusable nonuse.

372
00:12:41,932 --> 00:12:44,879
The third, you know, response option for

373
00:12:44,879 --> 00:12:47,827
the registrant is, of course, is deletion.

374
00:12:47,830 --> 00:12:49,685
If the registrant just deletes

375
00:12:49,685 --> 00:12:52,400
in the context of the proceeding,

376
00:12:52,400 --> 00:12:53,744
some or all of the challenged

377
00:12:53,744 --> 00:12:54,416
goods and services,

378
00:12:54,420 --> 00:12:56,240
it has immediate refect effect.

379
00:12:56,240 --> 00:12:58,525
And we will terminate the

380
00:12:58,525 --> 00:12:59,439
proceedings immediately.

381
00:12:59,440 --> 00:13:00,744
Now what happens though,

382
00:13:00,744 --> 00:13:02,048
if the registrant, the

383
00:13:02,048 --> 00:13:03,490
response is unacceptable,

384
00:13:03,490 --> 00:13:06,010
the proof of use is not accepted.

385
00:13:06,010 --> 00:13:08,002
At that point the examiner will

386
00:13:08,002 --> 00:13:10,190
issue a final action with another

387
00:13:10,190 --> 00:13:11,910
three-month response period.

388
00:13:11,910 --> 00:13:14,787
The registrant must respond with a request

389
00:13:14,787 --> 00:13:17,270
for reconsideration and a notice of appeal.

390
00:13:17,270 --> 00:13:18,646
Now in that request,

391
00:13:18,646 --> 00:13:20,366
if that request for reconsideration

392
00:13:20,366 --> 00:13:22,666
contains acceptable proof of use or deletion,

393
00:13:22,670 --> 00:13:24,180
then again we're going to

394
00:13:24,180 --> 00:13:25,086
terminate the proceedings.

395
00:13:25,090 --> 00:13:27,085
Otherwise then the examiner's decision

396
00:13:27,085 --> 00:13:29,900
to cancel can be appealed to the TTAB.

397
00:13:29,900 --> 00:13:33,890
And the regular Board timelines apply.

398
00:13:33,890 --> 00:13:35,962
All right, now we're going to get into

399
00:13:35,962 --> 00:13:38,190
the the meat of what we've been seeing

400
00:13:38,190 --> 00:13:41,748
as we've been working on these cases.

401
00:13:41,750 --> 00:13:44,396
So. We implemented, as I said,

402
00:13:44,400 --> 00:13:46,083
December 18th, 2021.

403
00:13:46,083 --> 00:13:49,214
Since then we've received 58 petitions.

404
00:13:49,214 --> 00:13:51,866
We have a working group that

405
00:13:51,866 --> 00:13:53,410
meets twice a week.

406
00:13:53,410 --> 00:13:55,738
This group includes nine high-level

407
00:13:55,738 --> 00:13:57,290
Policy and Petitions attorneys.

408
00:13:57,290 --> 00:13:59,570
So these are very experienced folks.

409
00:13:59,570 --> 00:14:00,834
We review each petition.

410
00:14:00,834 --> 00:14:03,427
We make a decision on whether to institute

411
00:14:03,427 --> 00:14:05,653
a proceeding, pretty much as a group.

412
00:14:05,660 --> 00:14:07,420
There are six "examiners."

413
00:14:07,420 --> 00:14:08,280
These are these, you know,

414
00:14:08,280 --> 00:14:10,415
very experienced folks. And four

415
00:14:10,415 --> 00:14:12,550
policy supervisor types like myself.

416
00:14:12,550 --> 00:14:13,420
I'm sitting in

417
00:14:13,420 --> 00:14:14,870
on these meetings where we're

418
00:14:14,870 --> 00:14:16,409
discussing each of these cases. Now

419
00:14:16,410 --> 00:14:18,699
we will also bring in folks from

420
00:14:18,699 --> 00:14:20,314
our Solicitor's Office and the

421
00:14:20,314 --> 00:14:21,919
Trademark Trial and Appeal Board

422
00:14:21,919 --> 00:14:23,910
on a regular basis to discuss

423
00:14:23,910 --> 00:14:26,010
specific cases or suspension issues.

424
00:14:26,010 --> 00:14:28,518
So there's a lot of interoffice

425
00:14:28,518 --> 00:14:30,300
communication going on to try

426
00:14:30,300 --> 00:14:32,120
to make sure that we are are,

427
00:14:32,120 --> 00:14:32,922
you know,

428
00:14:32,922 --> 00:14:35,328
handling these cases in in a

429
00:14:35,328 --> 00:14:36,130
consistent manner.

430
00:14:36,130 --> 00:14:38,069
We are working really hard to follow

431
00:14:38,069 --> 00:14:39,868
the statute and follow the rules,

432
00:14:39,870 --> 00:14:42,174
but we are also working really hard to make

433
00:14:42,174 --> 00:14:44,300
sure that these proceedings are useful.

434
00:14:44,300 --> 00:14:47,100
That is a delicate balancing act and

435
00:14:47,100 --> 00:14:49,888
we are certainly finding our footing.

436
00:14:49,890 --> 00:14:51,900
We've gotten a few questions and

437
00:14:51,900 --> 00:14:53,902
suggestions about how to find

438
00:14:53,902 --> 00:14:55,708
expungement/reexamination petitions.

439
00:14:55,710 --> 00:14:57,686
So if you don't know the serial number,

440
00:14:57,690 --> 00:15:00,140
how can you search for these proceedings

441
00:15:00,140 --> 00:15:02,178
where a petition has been filed?

442
00:15:02,180 --> 00:15:04,490
The short answer is there is no

443
00:15:04,490 --> 00:15:06,736
searchable data field in TESS for

444
00:15:06,736 --> 00:15:08,726
registrations where a petition for

445
00:15:08,726 --> 00:15:11,269
reexamination or expungement has been filed.

446
00:15:11,270 --> 00:15:12,062
Now you think,

447
00:15:12,062 --> 00:15:12,326
oh,

448
00:15:12,326 --> 00:15:14,468
just add a data field so we can

449
00:15:14,468 --> 00:15:16,284
search it. Harder than you think,

450
00:15:16,284 --> 00:15:17,608
harder than you think.

451
00:15:17,610 --> 00:15:20,319
So what are our workarounds here?

452
00:15:20,320 --> 00:15:22,693
The only place that an indication of

453
00:15:22,693 --> 00:15:24,576
whether an expungement or reexamination

454
00:15:24,576 --> 00:15:26,988
petition has been filed is in the

455
00:15:26,988 --> 00:15:28,718
prosecution history. That's in TSDR.

456
00:15:28,720 --> 00:15:30,890
But that's not really searchable.

457
00:15:30,890 --> 00:15:31,652
So we added,

458
00:15:31,652 --> 00:15:33,812
as you see on this slide here, we

459
00:15:33,812 --> 00:15:35,387
added a spreadsheet of petitions

460
00:15:35,387 --> 00:15:37,738
filed so you can find them easily.

461
00:15:37,740 --> 00:15:39,840
Include, includes the mark for you.

462
00:15:39,840 --> 00:15:42,040
It has a link to the TSDR record for

463
00:15:42,040 --> 00:15:43,820
the registration. And it tells you

464
00:15:43,820 --> 00:15:45,280
whether the petition was filed

465
00:15:45,280 --> 00:15:47,298
for expungement or reexamination,

466
00:15:47,300 --> 00:15:48,980
the date the petition was filed.

467
00:15:48,980 --> 00:15:50,750
This spreadsheet is updated weekly so

468
00:15:50,750 --> 00:15:52,777
when you are looking to see what has

469
00:15:52,777 --> 00:15:54,990
been filed and go in to look at the record,

470
00:15:54,990 --> 00:15:57,979
this is where you want to go.

471
00:15:57,980 --> 00:15:58,580
Now though,

472
00:15:58,580 --> 00:16:00,380
what are we going to do

473
00:16:00,380 --> 00:16:01,716
in the future? Well,

474
00:16:01,716 --> 00:16:03,980
this is exciting and this is a draft,

475
00:16:03,980 --> 00:16:05,849
so it used to say draft on it,

476
00:16:05,850 --> 00:16:06,960
but somehow it went away.

477
00:16:06,960 --> 00:16:10,304
So this is an enhancement of our TMA

478
00:16:10,304 --> 00:16:12,010
petition transparency initiative.

479
00:16:12,010 --> 00:16:13,942
So this screenshot is a wire frame

480
00:16:13,942 --> 00:16:16,118
of a future database, future database

481
00:16:16,118 --> 00:16:18,253
that will contain several different

482
00:16:18,253 --> 00:16:20,369
buckets of trademark decisions.

483
00:16:20,370 --> 00:16:22,154
Now the first bucket that I think you're

484
00:16:22,154 --> 00:16:24,394
going to be most interested right now is

485
00:16:24,394 --> 00:16:26,020
is the expungement/reexamination decisions.

486
00:16:26,020 --> 00:16:27,928
So these will be both the

487
00:16:27,928 --> 00:16:28,882
notices of institution

488
00:16:28,890 --> 00:16:30,787
and decisions by the examiner. And now

489
00:16:30,787 --> 00:16:33,323
we also are going to create another

490
00:16:33,323 --> 00:16:34,983
bucket for those administrative

491
00:16:34,983 --> 00:16:36,985
sanctions decisions that I spoke about

492
00:16:36,985 --> 00:16:38,936
in public webinars last year as well.

493
00:16:38,936 --> 00:16:40,366
The third bucket would be

494
00:16:40,366 --> 00:16:42,010
"Petition to the Director" decisions.

495
00:16:42,010 --> 00:16:44,570
So if you want to see petition decisions,

496
00:16:44,570 --> 00:16:45,842
that would be another bucket. And

497
00:16:45,842 --> 00:16:47,332
then we're going to have another

498
00:16:47,332 --> 00:16:48,528
one for precedential decisions.

499
00:16:48,530 --> 00:16:51,130
Maybe we'll even do TTAB decisions in there.

500
00:16:51,130 --> 00:16:52,218
Who knows, who knows.

501
00:16:52,218 --> 00:16:54,678
But we are looking at a six-month

502
00:16:54,678 --> 00:16:56,210
or more development process,

503
00:16:56,210 --> 00:16:57,687
but I wanted to let you know

504
00:16:57,687 --> 00:16:58,909
that we are trying to

505
00:16:58,910 --> 00:16:59,604
advance transparency

506
00:16:59,604 --> 00:16:59,951
here.

507
00:16:59,951 --> 00:17:02,380
We want you to be able to

508
00:17:02,449 --> 00:17:04,349
find these cases more easily.

509
00:17:06,510 --> 00:17:08,160
Now you probably are familiar.

510
00:17:08,160 --> 00:17:10,890
Remember I said we have our TMA webpage.

511
00:17:10,890 --> 00:17:12,708
We have information about the TMA.

512
00:17:12,710 --> 00:17:15,909
We have information that we provided last

513
00:17:15,909 --> 00:17:19,116
year in public webinars where you can go

514
00:17:19,116 --> 00:17:21,389
and and see the recordings from last year.

515
00:17:21,390 --> 00:17:23,462
Now the new um the new information

516
00:17:23,462 --> 00:17:26,029
on this webpage is under "Limitations

517
00:17:26,029 --> 00:17:28,044
of proceedings" and "Best practices."

518
00:17:28,050 --> 00:17:29,958
So these are some of the the lessons learned

519
00:17:29,958 --> 00:17:31,687
that I'm going to share with you today.

520
00:17:31,690 --> 00:17:32,710
We put on a webpage.

521
00:17:32,710 --> 00:17:34,446
So it's already, you can just skip

522
00:17:34,446 --> 00:17:35,790
this presentation and go to the webpage.

523
00:17:35,790 --> 00:17:37,153
No. I want you to stay. Wait,

524
00:17:37,153 --> 00:17:38,697
you're going to want to hear the questions.

525
00:17:38,700 --> 00:17:40,340
But if you go to the webpage,

526
00:17:40,340 --> 00:17:42,584
you'll see more lessons learned there

527
00:17:42,584 --> 00:17:45,207
and we were going to keep trying

528
00:17:45,207 --> 00:17:48,749
to add content there as we go.

529
00:17:48,750 --> 00:17:50,811
So what you all came here to to to

530
00:17:50,811 --> 00:17:52,638
find out is what are we seeing?

531
00:17:52,640 --> 00:17:54,355
What are the common mistakes we're seeing?

532
00:17:54,360 --> 00:17:56,240
So let's dive into that.

533
00:17:56,240 --> 00:17:57,800
So what do we want?

534
00:17:57,800 --> 00:18:00,096
What have we seen so far in petitions

535
00:18:00,096 --> 00:18:02,162
that we want petitioners to stop

536
00:18:02,162 --> 00:18:04,337
doing or just start doing. So

537
00:18:04,337 --> 00:18:07,513
we want you to start doing the following.

538
00:18:07,520 --> 00:18:08,374
Number one.

539
00:18:08,374 --> 00:18:11,790
Start giving us an index of the evidence.

540
00:18:11,790 --> 00:18:13,956
Make it a separate page. Label

541
00:18:13,960 --> 00:18:15,005
the evidence with the petition

542
00:18:15,005 --> 00:18:16,350
and match it to the index.

543
00:18:16,350 --> 00:18:18,807
Exhibit A, Exhibit B. That will make

544
00:18:18,810 --> 00:18:21,130
our life a lot easier trying to cross

545
00:18:21,130 --> 00:18:23,169
reference what you're what you're doing.

546
00:18:23,169 --> 00:18:23,522
What

547
00:18:23,522 --> 00:18:26,299
what the evidence is supposed to go to.

548
00:18:26,299 --> 00:18:28,378
What goods and services you are using

549
00:18:28,378 --> 00:18:30,536
that evidence to show nonuse for.

550
00:18:30,540 --> 00:18:31,624
Number two.

551
00:18:31,624 --> 00:18:33,250
Start providing documentary

552
00:18:33,250 --> 00:18:36,280
evidence for each search you do,

553
00:18:36,280 --> 00:18:39,070
even if it's a negative search.

554
00:18:39,070 --> 00:18:41,950
That is, "I did a search and I found nothing."

555
00:18:41,950 --> 00:18:43,106
Tell us it's. Show us.

556
00:18:43,106 --> 00:18:45,170
Give us documentary evidence of that.

557
00:18:45,170 --> 00:18:46,886
Show us the null search results.

558
00:18:46,890 --> 00:18:48,086
We want documentary evidence.

559
00:18:48,086 --> 00:18:50,243
If. We don't want you to just

560
00:18:50,243 --> 00:18:51,748
say, "I didn't find anything."

561
00:18:51,750 --> 00:18:54,222
We want to actually have the

562
00:18:54,222 --> 00:18:56,634
the web results that that show

563
00:18:56,634 --> 00:18:58,218
that nothing was there.

564
00:18:58,220 --> 00:18:58,521
OK.

565
00:18:58,521 --> 00:19:00,327
What do we want you to

566
00:19:00,327 --> 00:19:02,210
stop doing as petitioners?

567
00:19:02,210 --> 00:19:02,886
Number one.

568
00:19:02,886 --> 00:19:04,576
Stop shrinking the website evidence

569
00:19:04,576 --> 00:19:06,080
when you screen grab it.

570
00:19:06,080 --> 00:19:07,514
You should make sure we can

571
00:19:07,514 --> 00:19:09,424
read the URLs in case we want

572
00:19:09,424 --> 00:19:10,919
to create, recreate your search.

573
00:19:10,920 --> 00:19:12,705
We've had some cases where it's just

574
00:19:12,705 --> 00:19:14,039
shrinking the evidence so far down

575
00:19:14,040 --> 00:19:15,032
we can't see it.

576
00:19:15,032 --> 00:19:15,280
Well,

577
00:19:15,280 --> 00:19:16,816
then we have to do, issue a 30-day

578
00:19:16,816 --> 00:19:18,335
letter and you need to send

579
00:19:18,335 --> 00:19:19,925
us that evidence back so we can

580
00:19:19,925 --> 00:19:21,060
actually see what it says.

581
00:19:21,060 --> 00:19:21,408
Remember,

582
00:19:21,408 --> 00:19:21,756
though,

583
00:19:21,756 --> 00:19:24,192
we need the legible URLs and we

584
00:19:24,192 --> 00:19:25,897
need the dates of access.

585
00:19:25,900 --> 00:19:28,426
They're required for webpages submitted

586
00:19:28,430 --> 00:19:29,280
as evidence.

587
00:19:29,280 --> 00:19:31,405
Would really appreciate that 'cause

588
00:19:31,405 --> 00:19:33,458
your evidence doesn't do you any

589
00:19:33,458 --> 00:19:36,112
good if we can't read it. Number two.

590
00:19:36,112 --> 00:19:39,808
Stop providing only evidence of current nonuse.

591
00:19:39,810 --> 00:19:40,253
Remember,

592
00:19:40,253 --> 00:19:42,468
these are, these are proceedings

593
00:19:42,468 --> 00:19:45,210
designed to get at past nonuse,

594
00:19:45,210 --> 00:19:46,080
not current nonuse.

595
00:19:46,080 --> 00:19:48,110
We'll get to that in a little

596
00:19:48,173 --> 00:19:49,778
bit. I'll expand on that.

597
00:19:49,778 --> 00:19:51,488
But current nonuse alone

598
00:19:51,488 --> 00:19:53,671
is not going to work. Number three.

599
00:19:53,671 --> 00:19:56,737
Stop providing evidence of one bad

600
00:19:56,737 --> 00:19:59,858
specimen to challenge the entire class.

601
00:19:59,860 --> 00:20:01,855
One bad specimen goes to those goods

602
00:20:01,855 --> 00:20:03,668
that are shown in the specimen.

603
00:20:03,670 --> 00:20:05,357
It doesn't go to the entire class.

604
00:20:05,360 --> 00:20:07,790
You will need more than that

605
00:20:07,790 --> 00:20:09,050
to challenge the entire class,

606
00:20:09,050 --> 00:20:11,498
and we'll talk about that in a minute.

607
00:20:11,500 --> 00:20:12,368
Number four.

608
00:20:12,368 --> 00:20:14,104
Stop referencing other registrations

609
00:20:14,104 --> 00:20:16,278
of the registrant without providing

610
00:20:16,278 --> 00:20:18,558
the relevant portions of the record.

611
00:20:18,560 --> 00:20:20,611
Don't just refer to these other registration

612
00:20:20,611 --> 00:20:22,569
numbers and say something about them.

613
00:20:22,570 --> 00:20:24,172
Give us the relevant portions that

614
00:20:24,172 --> 00:20:26,609
you want us to look at of the

615
00:20:26,609 --> 00:20:28,244
registration that you're talking about.

616
00:20:28,250 --> 00:20:29,982
Number four, I'm sorry.

617
00:20:29,982 --> 00:20:30,848
Number five.

618
00:20:30,850 --> 00:20:33,364
Stop providing entire records of other

619
00:20:33,364 --> 00:20:35,040
administrative or litigated proceedings,

620
00:20:35,095 --> 00:20:37,189
rather than just the relevant portions.

621
00:20:37,190 --> 00:20:38,398
We're getting lost in

622
00:20:38,398 --> 00:20:39,606
these evidence data dumps.

623
00:20:39,610 --> 00:20:41,570
And we may have to consider page limits.

624
00:20:41,570 --> 00:20:43,406
So give us what you, specifically

625
00:20:43,406 --> 00:20:45,320
the parts that you want us to

626
00:20:45,320 --> 00:20:47,250
look at. If you give us a whole

627
00:20:47,250 --> 00:20:49,250
proceeding with hundreds of pages,

628
00:20:49,250 --> 00:20:51,980
I think the, your, the persuasiveness of

629
00:20:51,980 --> 00:20:54,604
your your evidence may get a little bit

630
00:20:54,604 --> 00:20:56,847
lost and you don't want that to happen.

631
00:20:56,850 --> 00:20:58,420
All right.

632
00:20:58,420 --> 00:21:01,800
Reasonable investigation.

633
00:21:01,800 --> 00:21:03,800
The investigation is an element

634
00:21:03,800 --> 00:21:05,400
of a complete application,

635
00:21:05,400 --> 00:21:08,193
but it does not replace the need

636
00:21:08,193 --> 00:21:10,239
for documentary evidence of nonuse.

637
00:21:10,240 --> 00:21:12,060
Again, if you're, you know,

638
00:21:12,060 --> 00:21:13,460
telling us that you did a search

639
00:21:13,460 --> 00:21:14,480
and didn't find anything,

640
00:21:14,480 --> 00:21:15,840
we want documentary evidence to

641
00:21:15,840 --> 00:21:17,519
show that. You're just telling us

642
00:21:17,519 --> 00:21:18,859
that that was your investigation,

643
00:21:18,860 --> 00:21:21,794
but we need, we need actual evidence of that.

644
00:21:21,800 --> 00:21:23,972
So provide evidence is the, of

645
00:21:23,972 --> 00:21:26,480
the results of the investigation.

646
00:21:26,480 --> 00:21:29,910
We've had affidavits of a nonuse

647
00:21:29,910 --> 00:21:32,081
investigation and it was testimonial.

648
00:21:32,081 --> 00:21:32,478
Basically,

649
00:21:32,478 --> 00:21:34,463
testimonial evidence of the search,

650
00:21:34,470 --> 00:21:36,936
but it did not give us the

651
00:21:36,936 --> 00:21:38,560
documentary evidence that corroborates

652
00:21:38,560 --> 00:21:39,778
that testimonial evidence.

653
00:21:39,780 --> 00:21:41,404
So that's what we're we're looking for.

654
00:21:41,410 --> 00:21:43,174
It's not enough to say you

655
00:21:43,174 --> 00:21:44,350
didn't find any hits,

656
00:21:44,350 --> 00:21:46,750
you really have to to give us evidence.

657
00:21:46,750 --> 00:21:47,944
Uhm, for example,

658
00:21:47,944 --> 00:21:49,934
a screenshot showing a search

659
00:21:49,934 --> 00:21:52,607
for a subject mark on Walmart,

660
00:21:52,610 --> 00:21:55,610
Target, Amazon returned zero hits.

661
00:21:55,610 --> 00:21:58,310
You know we want that screenshot.

662
00:21:58,310 --> 00:22:00,510
Screenshot showing a search of

663
00:22:00,510 --> 00:22:02,158
the WayBack machine Archive.org.

664
00:22:02,158 --> 00:22:03,798
That it returns zero hits.

665
00:22:03,800 --> 00:22:06,430
That's showing no past use. That

666
00:22:06,430 --> 00:22:07,240
that's really helpful.

667
00:22:07,240 --> 00:22:09,442
We want to see that. We want to

668
00:22:09,442 --> 00:22:11,290
know the time period covered by the

669
00:22:11,290 --> 00:22:14,010
search that you did in Archive.org.

670
00:22:14,010 --> 00:22:16,162
The evidence of nonuse as of the relevant

671
00:22:16,162 --> 00:22:18,585
data is the key to a prima facie case.

672
00:22:18,590 --> 00:22:20,336
So if you're just searching Amazon

673
00:22:20,336 --> 00:22:22,259
and Google for current nonuse that

674
00:22:22,259 --> 00:22:23,669
doesn't tell us that it wasn't

675
00:22:23,669 --> 00:22:25,487
in use back in the relevant date.

676
00:22:25,490 --> 00:22:28,980
So current nonuse is not going to be enough.

677
00:22:28,980 --> 00:22:30,830
And here's here's a tip.

678
00:22:30,830 --> 00:22:34,590
If the mark is a just a design-only element,

679
00:22:34,590 --> 00:22:36,480
do a reverse image search and show

680
00:22:36,480 --> 00:22:37,290
us the results.

681
00:22:37,290 --> 00:22:39,970
Don't do a search of the company name.

682
00:22:39,970 --> 00:22:42,469
You have to search the mark. And

683
00:22:42,469 --> 00:22:43,540
so provide

684
00:22:43,622 --> 00:22:45,855
us evidence of nonuse of the image

685
00:22:45,855 --> 00:22:48,160
by doing a reverse image search in

686
00:22:48,160 --> 00:22:51,053
in a search engine. That that would be

687
00:22:51,053 --> 00:22:53,321
really helpful when we're talking about

688
00:22:53,321 --> 00:22:58,660
a design-only mark. OK, next slide.

689
00:23:01,150 --> 00:23:02,866
And I I've hammered this already

690
00:23:02,870 --> 00:23:04,795
I'm sure. Current nonuse is not enough.

691
00:23:04,800 --> 00:23:06,710
OK, we've gotten several petitions

692
00:23:06,710 --> 00:23:09,091
with only an investigation of current

693
00:23:09,091 --> 00:23:10,715
nonuse and document documentary

694
00:23:10,715 --> 00:23:12,745
evidence of current nonuse.

695
00:23:12,750 --> 00:23:14,832
But it doesn't establish by itself

696
00:23:14,832 --> 00:23:17,032
a prima facie case of nonuse

697
00:23:17,032 --> 00:23:19,150
as of the relevant date in the past.

698
00:23:19,150 --> 00:23:20,465
But nonetheless we can consider

699
00:23:20,465 --> 00:23:22,848
it as part of a larger body of

700
00:23:22,848 --> 00:23:24,528
evidence as examiners are weighing

701
00:23:24,528 --> 00:23:26,413
that prima facie case, weighing

702
00:23:26,413 --> 00:23:28,338
the different pieces of evidence.

703
00:23:28,340 --> 00:23:30,796
Next one. Original specimen.

704
00:23:30,796 --> 00:23:32,604
So evidence that establishes

705
00:23:32,604 --> 00:23:34,594
that a digitally altered specimen

706
00:23:34,594 --> 00:23:36,690
that was originally submitted,

707
00:23:36,690 --> 00:23:38,986
that can be prima facie evidence of

708
00:23:38,986 --> 00:23:41,549
nonuse as of the relevant date.

709
00:23:41,550 --> 00:23:43,110
We're following examination practice.

710
00:23:43,110 --> 00:23:45,789
We're presuming that nonuse of that

711
00:23:45,789 --> 00:23:47,728
good or service and the goods or

712
00:23:47,728 --> 00:23:49,765
services in the scope of that ID that

713
00:23:49,765 --> 00:23:51,920
was based on the digitally altered specimen.

714
00:23:51,920 --> 00:23:53,520
We can presume nonuse

715
00:23:53,520 --> 00:23:55,630
based on the the specimen.

716
00:23:55,630 --> 00:23:57,870
So let me let me repeat that. So we get

717
00:23:57,870 --> 00:23:59,660
we get a bad specimen,

718
00:23:59,660 --> 00:24:01,050
evidence of a bad specimen.

719
00:24:01,050 --> 00:24:04,774
It was digitally altered, mocked up, fake.

720
00:24:04,780 --> 00:24:05,492
That bad

721
00:24:05,492 --> 00:24:07,984
specimen will be enough to show us

722
00:24:07,984 --> 00:24:10,511
that there was good evidence of nonuse

723
00:24:10,511 --> 00:24:13,078
of the relevant date for the

724
00:24:13,078 --> 00:24:15,268
good that's shown in that picture.

725
00:24:15,270 --> 00:24:17,769
In that specimen. Or any goods that

726
00:24:17,769 --> 00:24:20,109
could be covered by that specimen.

727
00:24:20,110 --> 00:24:20,503
However.

728
00:24:20,503 --> 00:24:22,861
That one specimen for that good

729
00:24:22,861 --> 00:24:24,506
doesn't establish a presumption

730
00:24:24,506 --> 00:24:26,864
of nonuse for the whole class.

731
00:24:26,870 --> 00:24:28,162
That's that's the thing.

732
00:24:28,162 --> 00:24:29,777
So examiners cannot presume nonuse

733
00:24:29,777 --> 00:24:31,621
of the mark for the entire

734
00:24:31,621 --> 00:24:33,293
class of goods and services based

735
00:24:33,293 --> 00:24:34,585
on that one specimen.

736
00:24:34,590 --> 00:24:36,330
We are aware that that

737
00:24:36,330 --> 00:24:38,070
specimen was offered for. That

738
00:24:38,070 --> 00:24:39,685
only one specimen was offered

739
00:24:39,685 --> 00:24:40,977
for that whole class,

740
00:24:40,980 --> 00:24:43,100
but we still can't institute

741
00:24:43,100 --> 00:24:45,220
proceedings on the whole class

742
00:24:45,299 --> 00:24:47,889
based on that one bad fake specimen.

743
00:24:47,890 --> 00:24:48,882
And you gotta remember,

744
00:24:48,882 --> 00:24:50,902
this is not a fraud proceeding. You know,

745
00:24:50,902 --> 00:24:53,030
in fraud, if you have a tainted good,

746
00:24:53,030 --> 00:24:54,206
it can take the whole class.

747
00:24:54,210 --> 00:24:56,180
That's that's not what these

748
00:24:56,180 --> 00:24:57,756
proceedings are designed for.

749
00:24:57,760 --> 00:24:59,398
So lastly, uhm.

750
00:24:59,398 --> 00:25:01,036
Moving to to

751
00:25:01,040 --> 00:25:03,330
challenging the entire class. Now.

752
00:25:03,330 --> 00:25:03,656
OK.

753
00:25:03,656 --> 00:25:05,938
Let's say you have evidence, that digitally

754
00:25:05,938 --> 00:25:07,940
altered specimen. You have a fake specimen.

755
00:25:07,940 --> 00:25:10,922
You've got good evidence of the the the

756
00:25:10,922 --> 00:25:12,880
specimen being digitally altered.

757
00:25:12,880 --> 00:25:14,604
Now add to that.

758
00:25:14,604 --> 00:25:17,820
Add to that. Evidence of current nonuse,

759
00:25:17,820 --> 00:25:20,907
lack of U.S. presence of that owner,

760
00:25:20,910 --> 00:25:22,428
lack of an internet presence at

761
00:25:22,428 --> 00:25:24,397
all for the mark or for the owner,

762
00:25:24,400 --> 00:25:25,428
particularly if we're talking

763
00:25:25,428 --> 00:25:26,970
about consumer goods that are that

764
00:25:27,014 --> 00:25:28,058
are typically sold online.

765
00:25:28,060 --> 00:25:30,850
That as a whole may establish

766
00:25:30,850 --> 00:25:32,542
a reasonable predicate of nonuse

767
00:25:32,542 --> 00:25:34,751
as to the entire set of challenged

768
00:25:34,751 --> 00:25:35,768
goods and services.

769
00:25:35,770 --> 00:25:37,966
So if you just give us this bad specimen,

770
00:25:37,970 --> 00:25:39,122
that's not going to be enough

771
00:25:39,122 --> 00:25:40,150
to challenge the whole class.

772
00:25:40,150 --> 00:25:42,341
You've got to give us more evidence

773
00:25:42,341 --> 00:25:44,268
that raises a presumption, raises

774
00:25:44,268 --> 00:25:46,409
an inference that that there is

775
00:25:46,409 --> 00:25:48,552
nonuse on all of the goods and

776
00:25:48,552 --> 00:25:50,400
services because the owner or the

777
00:25:50,400 --> 00:25:52,726
mark is just not showing up anywhere

778
00:25:52,726 --> 00:25:54,724
on the internet, in the WayBack

779
00:25:54,730 --> 00:25:57,410
machine, anything like that.

780
00:25:57,410 --> 00:26:00,560
We're looking for more. Alright.

781
00:26:03,810 --> 00:26:05,730
I think I kind of already went over

782
00:26:05,730 --> 00:26:07,188
this. Documentary evidence of nonuse.

783
00:26:07,190 --> 00:26:08,790
If you want us to consider your evidence,

784
00:26:08,790 --> 00:26:10,860
make it easy for us to to find it.

785
00:26:10,860 --> 00:26:14,400
Index is great. Data dumps not great.

786
00:26:14,400 --> 00:26:15,872
If you want to rely on the record

787
00:26:15,872 --> 00:26:17,409
of a different registration,

788
00:26:17,410 --> 00:26:19,930
don't just give us the TSDR entries.

789
00:26:19,930 --> 00:26:22,303
Give us the relevant portions of specific

790
00:26:22,303 --> 00:26:24,167
documents you want us to look at.

791
00:26:24,170 --> 00:26:25,010
So for example,

792
00:26:25,010 --> 00:26:26,690
if a maintenance document shows nonuse

793
00:26:26,690 --> 00:26:28,755
or deletion of the goods at issue,

794
00:26:28,760 --> 00:26:31,025
provide that document not just

795
00:26:31,025 --> 00:26:33,290
the entire TSDR print out.

796
00:26:33,290 --> 00:26:34,640
While we may, you know,

797
00:26:34,640 --> 00:26:36,817
if you give us the TSDR print out,

798
00:26:36,820 --> 00:26:39,684
we may go and and look into those

799
00:26:39,684 --> 00:26:41,388
records without specific relevant,

800
00:26:41,388 --> 00:26:42,792
you know, documentary evidence

801
00:26:42,792 --> 00:26:45,190
there we we may go in and look at it,

802
00:26:45,190 --> 00:26:47,128
but it's really at the examiner's discretion

803
00:26:47,128 --> 00:26:49,746
about what weight to give that. Um.

804
00:26:49,750 --> 00:26:53,574
So avoid giving us evidence in the record

805
00:26:53,574 --> 00:26:56,840
that doesn't directly address nonuse.

806
00:26:56,840 --> 00:26:58,056
Alright, now,

807
00:26:58,056 --> 00:27:02,312
once we've reviewed the prima facie case,

808
00:27:02,320 --> 00:27:03,640
whether it exists or not,

809
00:27:03,640 --> 00:27:05,071
the reasonable investigation

810
00:27:05,071 --> 00:27:07,456
in the prima facie case.

811
00:27:07,460 --> 00:27:09,415
Then we decide whether to

812
00:27:09,415 --> 00:27:10,979
institute proceedings or not.

813
00:27:10,980 --> 00:27:12,522
We will only institute on the

814
00:27:12,522 --> 00:27:14,101
goods and services for which a

815
00:27:14,101 --> 00:27:15,583
prima facie case has been made.

816
00:27:15,590 --> 00:27:16,434
Now, if we institute,

817
00:27:16,434 --> 00:27:17,700
I think I said this earlier,

818
00:27:17,700 --> 00:27:19,878
the registrant will get a notice

819
00:27:19,878 --> 00:27:21,804
of institution and an office

820
00:27:21,804 --> 00:27:23,416
action in one document.

821
00:27:23,420 --> 00:27:24,926
The notice will include the petitioner's

822
00:27:24,930 --> 00:27:26,310
evidence and requests the

823
00:27:26,310 --> 00:27:27,690
registrant to rebut the prima

824
00:27:27,736 --> 00:27:29,276
facie case within three months.

825
00:27:29,280 --> 00:27:32,346
A one-month extension is available.

826
00:27:32,350 --> 00:27:34,100
We have not received any

827
00:27:34,100 --> 00:27:35,150
registrant responses yet,

828
00:27:35,150 --> 00:27:37,178
so I don't have any lessons

829
00:27:37,178 --> 00:27:39,296
learned to share with you on that.

830
00:27:39,300 --> 00:27:41,240
We're only dealing with the

831
00:27:41,240 --> 00:27:43,180
petitions and the notices of

832
00:27:43,258 --> 00:27:45,410
institution or non-institution.

833
00:27:49,130 --> 00:27:50,732
If the petition does not establish

834
00:27:50,732 --> 00:27:52,602
a prima facie case of nonuse, we will

835
00:27:52,602 --> 00:27:54,288
issue a notice of non-institution.

836
00:27:54,290 --> 00:27:55,720
I know that sounds weird, right?

837
00:27:57,900 --> 00:28:00,276
We're not calling this a decision.

838
00:28:00,280 --> 00:28:02,866
These are not normal 2.146 petitions.

839
00:28:02,870 --> 00:28:04,820
These are these are something different.

840
00:28:04,820 --> 00:28:08,558
So we're calling this a determination,

841
00:28:08,560 --> 00:28:10,555
not a decision. A determination

842
00:28:10,555 --> 00:28:13,280
not to institute is not a denial.

843
00:28:13,280 --> 00:28:14,306
Likewise, a determination

844
00:28:14,306 --> 00:28:16,358
to institute is not a grant.

845
00:28:16,360 --> 00:28:18,160
So we're not granting petitions or

846
00:28:18,160 --> 00:28:19,810
denying petitions in this context.

847
00:28:19,810 --> 00:28:21,850
We are instituting proceedings

848
00:28:21,850 --> 00:28:23,890
or not instituting proceedings.

849
00:28:23,890 --> 00:28:25,510
Now remember, the Director's

850
00:28:25,510 --> 00:28:28,350
decision to institute or not is 

851
00:28:28,350 --> 00:28:30,260
non-reviewable.

852
00:28:30,260 --> 00:28:33,300
So if the Director decides not to institute,

853
00:28:33,300 --> 00:28:34,920
the Examiner will indicate that

854
00:28:34,920 --> 00:28:36,540
the evidence was insufficient to

855
00:28:36,597 --> 00:28:38,167
establish a prima facie case.

856
00:28:38,170 --> 00:28:38,583
However,

857
00:28:38,583 --> 00:28:40,648
the examiner will not provide

858
00:28:40,648 --> 00:28:42,811
a detailed description of how

859
00:28:42,811 --> 00:28:44,567
the evidence was insufficient.

860
00:28:44,570 --> 00:28:46,481
And I'm sure that you all will

861
00:28:46,481 --> 00:28:48,077
be frustrated that we're not

862
00:28:48,077 --> 00:28:49,505
outlining in exhaustive detail

863
00:28:49,505 --> 00:28:51,330
where the petition went wrong.

864
00:28:51,330 --> 00:28:53,598
These notices are not designed to give

865
00:28:53,598 --> 00:28:55,807
the petitioner a road map for appeal.

866
00:28:55,810 --> 00:28:56,245
Remember,

867
00:28:56,245 --> 00:28:58,420
there's no appeal of the

868
00:28:58,420 --> 00:28:59,290
Director's determination.

869
00:28:59,290 --> 00:29:01,138
So instead I would direct you

870
00:29:01,138 --> 00:29:02,370
guys for perspective petitioners

871
00:29:02,420 --> 00:29:04,472
to review the cases where the

872
00:29:04,472 --> 00:29:05,498
Director instituted proceedings.

873
00:29:05,500 --> 00:29:06,748
What was the search?

874
00:29:06,748 --> 00:29:08,308
What was the evidence that

875
00:29:08,308 --> 00:29:09,549
worked in those cases?

876
00:29:09,550 --> 00:29:11,458
When you compare the different petitions

877
00:29:11,460 --> 00:29:12,192
and the outcomes,

878
00:29:12,192 --> 00:29:13,656
I think that will be instructive.

879
00:29:13,660 --> 00:29:17,512
That's your road map for finding

880
00:29:17,512 --> 00:29:20,080
the successful future petition.

881
00:29:20,080 --> 00:29:21,820
Director-initiated proceedings.

882
00:29:21,820 --> 00:29:25,738
Now we're in early days here and we know

883
00:29:25,738 --> 00:29:28,449
neither the USPTO nor the petitioners,

884
00:29:28,450 --> 00:29:30,305
knew or even still know what to

885
00:29:30,305 --> 00:29:31,710
expect with these petitions.

886
00:29:31,710 --> 00:29:33,360
So it makes sense that we've

887
00:29:33,360 --> 00:29:34,810
gotten sort of test case.

888
00:29:34,810 --> 00:29:36,230
We've gotten petitions where it

889
00:29:36,230 --> 00:29:38,050
looks like they, we're being tested.

890
00:29:38,050 --> 00:29:40,036
How little evidence can I provide

891
00:29:40,036 --> 00:29:42,670
and still get the USPTO to institute?

892
00:29:42,670 --> 00:29:43,528
Or, you know,

893
00:29:43,528 --> 00:29:46,210
we've we faced a lot of deficient petitions,

894
00:29:46,210 --> 00:29:50,813
right? We've faced cases where, you know, it

895
00:29:50,813 --> 00:29:54,920
it seems like it's a fishing expedition, so.

896
00:29:54,920 --> 00:29:55,740
A lot of these cases,

897
00:29:55,740 --> 00:29:57,900
there's almost a prima facie case,

898
00:29:57,900 --> 00:30:00,192
but just a better search would

899
00:30:00,192 --> 00:30:01,720
have uncovered some more.

900
00:30:01,720 --> 00:30:03,939
And we we discover that when we

901
00:30:03,939 --> 00:30:06,651
do our search and we look at what

902
00:30:06,651 --> 00:30:08,766
the petitioner's done and may need

903
00:30:08,766 --> 00:30:10,878
a little bit more evidence. So

904
00:30:10,880 --> 00:30:12,805
in those cases where is almost a

905
00:30:12,805 --> 00:30:14,652
case but not a case, our examiners,

906
00:30:14,652 --> 00:30:15,184
you know,

907
00:30:15,184 --> 00:30:17,520
they they want to just add the evidence.

908
00:30:17,520 --> 00:30:18,112
They can't.

909
00:30:18,112 --> 00:30:20,184
They are not allowed to supplement a

910
00:30:20,184 --> 00:30:22,858
an evidence to perfect a deficient petition.

911
00:30:22,860 --> 00:30:23,900
That's not their job.

912
00:30:23,900 --> 00:30:24,940
That's the petitioners' jobs.

913
00:30:24,940 --> 00:30:25,723
So, you know,

914
00:30:25,723 --> 00:30:27,289
we're in early days and we

915
00:30:27,289 --> 00:30:28,975
recognize that we're sort of feeling

916
00:30:28,975 --> 00:30:30,472
each other out here, you know,

917
00:30:30,472 --> 00:30:32,080
with what's going to work in a petition.

918
00:30:32,080 --> 00:30:33,790
So we actually have helped out

919
00:30:33,790 --> 00:30:35,310
in at least one case.

920
00:30:35,310 --> 00:30:36,235
And I think you'll probably

921
00:30:36,235 --> 00:30:37,160
see that a bit more.

922
00:30:37,160 --> 00:30:39,464
So in one case where the petition was

923
00:30:39,464 --> 00:30:41,950
deficient, we actually issued a, you know,

924
00:30:41,950 --> 00:30:42,788
we instituted

925
00:30:42,788 --> 00:30:45,302
on the on the goods where

926
00:30:45,302 --> 00:30:47,900
there was sufficient evidence.

927
00:30:47,900 --> 00:30:49,961
We did a notice of non-institution on the

928
00:30:49,961 --> 00:30:51,846
goods where there wasn't good evidence,

929
00:30:51,850 --> 00:30:53,326
but then we turned around and

930
00:30:53,326 --> 00:30:54,310
we issued a Director-

931
00:30:54,367 --> 00:30:56,124
initiated proceeding to fill the

932
00:30:56,124 --> 00:30:57,704
gaps in the original petition.

933
00:30:57,710 --> 00:31:00,044
So where there wasn't enough evidence

934
00:31:00,044 --> 00:31:02,768
for us to institute on the petition,

935
00:31:02,770 --> 00:31:05,542
we then, our examiners, went and they

936
00:31:05,542 --> 00:31:08,061
found evidence and basically just added

937
00:31:08,061 --> 00:31:10,987
to it and initiated a Director-ordered

938
00:31:11,064 --> 00:31:13,780
proceeding and and filled in the gap

939
00:31:13,780 --> 00:31:17,350
that way. Now, if that happens repeatedly,

940
00:31:17,350 --> 00:31:19,182
these will be really good cases for you

941
00:31:19,182 --> 00:31:21,329
to look at because they show where the

942
00:31:21,329 --> 00:31:23,304
petitioner went wrong and how the USPTO

943
00:31:23,304 --> 00:31:24,972
determined that a prima facie case

944
00:31:24,972 --> 00:31:26,146
should have been established because

945
00:31:26,146 --> 00:31:27,970
we went ahead and filled in those gaps.

946
00:31:27,970 --> 00:31:30,634
But. Please do not rely on the USPTO to

947
00:31:30,634 --> 00:31:33,048
institute Director-initiated proceedings on a

948
00:31:33,048 --> 00:31:35,829
registration for which you filed a petition,

949
00:31:35,830 --> 00:31:37,606
but you didn't provide enough evidence.

950
00:31:37,610 --> 00:31:40,346
We cannot save your petition in every case.

951
00:31:40,350 --> 00:31:42,180
That's a lot of resources.

952
00:31:42,180 --> 00:31:44,334
So as our registrants' responses start

953
00:31:44,334 --> 00:31:47,411
coming in or we find our own Director-

954
00:31:47,411 --> 00:31:49,769
initiated proceedings to to work on,

955
00:31:49,770 --> 00:31:51,554
we're not going to be able to spend

956
00:31:51,554 --> 00:31:53,529
a lot of resources supplementing,

957
00:31:53,530 --> 00:31:56,386
you know, deficient petitions by by adding

958
00:31:56,386 --> 00:31:59,179
on parallel Director-initiated positions.

959
00:31:59,180 --> 00:31:59,800
So so keep that in mind.

960
00:31:59,800 --> 00:32:02,173
Don't don't rely on us to clean

961
00:32:02,173 --> 00:32:04,893
up or find the evidence that you

962
00:32:04,893 --> 00:32:07,317
didn't go after on your own.

963
00:32:07,320 --> 00:32:10,272
We we are going to get stretched for

964
00:32:10,272 --> 00:32:12,423
resources pretty quickly as responses come

965
00:32:12,423 --> 00:32:15,829
in and we want to make sure we're able to

966
00:32:15,830 --> 00:32:17,540
be consistent in how we're

967
00:32:17,540 --> 00:32:19,136
treating these things. OK.

968
00:32:19,136 --> 00:32:20,268
Uhm, suspensions.

969
00:32:20,268 --> 00:32:23,098
Let's talk about that briefly.

970
00:32:23,100 --> 00:32:25,809
'Cause we get, we do get questions on this.

971
00:32:25,810 --> 00:32:27,043
If you recall,

972
00:32:27,043 --> 00:32:29,888
in the rule it provides that expungement

973
00:32:29,888 --> 00:32:32,300
and reexamination proceedings can be the

974
00:32:32,359 --> 00:32:34,940
basis for suspension of related proceedings.

975
00:32:34,940 --> 00:32:37,404
And that means that if the same registration

976
00:32:37,410 --> 00:32:39,741
that's at issue in a TMA proceeding

977
00:32:39,741 --> 00:32:42,150
is the subject of civil litigation,

978
00:32:42,150 --> 00:32:44,020
the TMA examiner may suspend

979
00:32:44,020 --> 00:32:45,516
those proceedings upon request

980
00:32:45,516 --> 00:32:47,410
and if otherwise appropriate,

981
00:32:47,410 --> 00:32:48,842
if civil litigation relevant

982
00:32:48,842 --> 00:32:49,916
to that registration

983
00:32:49,920 --> 00:32:50,416
is ongoing.

984
00:32:50,416 --> 00:32:52,400
So, you know, we we can suspend our

985
00:32:52,460 --> 00:32:54,776
proceedings based on the civil litigation

986
00:32:54,780 --> 00:32:57,156
if you ask us and otherwise it's appropriate.

987
00:32:57,160 --> 00:32:59,679
Now the same is true if the same,

988
00:32:59,679 --> 00:33:00,994
the registration is the subject

989
00:33:00,994 --> 00:33:03,343
of a proceeding at the TTAB. Either

990
00:33:03,343 --> 00:33:04,755
proceeding may be suspended,

991
00:33:04,760 --> 00:33:05,290
the tee,

992
00:33:05,290 --> 00:33:06,615
the Board's proceeding may be to

993
00:33:06,615 --> 00:33:08,382
suspend it or the TMA proceeding

994
00:33:08,382 --> 00:33:09,917
may be suspended as appropriate,

995
00:33:09,920 --> 00:33:14,180
whichever is is deemed to be

996
00:33:14,180 --> 00:33:16,484
necessary to make sure that we're

997
00:33:16,484 --> 00:33:18,700
we're handling the case properly.

998
00:33:18,700 --> 00:33:20,168
As I said before,

999
00:33:20,168 --> 00:33:23,020
remember TTAB folks are coming to our TMA

1000
00:33:23,020 --> 00:33:24,092
working group meetings.

1001
00:33:24,092 --> 00:33:25,700
So we were talking about those

1002
00:33:25,756 --> 00:33:27,316
suspensions and when to do that.

1003
00:33:27,320 --> 00:33:30,328
So there's a lot of communication going on.

1004
00:33:30,330 --> 00:33:32,880
Now if a registration is relevant,

1005
00:33:32,880 --> 00:33:35,046
if the registration and a TMA

1006
00:33:35,046 --> 00:33:37,242
proceeding is relevant to a Section

1007
00:33:37,242 --> 00:33:39,629
2(d) cite in examination or it's the

1008
00:33:39,629 --> 00:33:41,619
subject of a maintenance filing,

1009
00:33:41,620 --> 00:33:42,928
examining attorneys and

1010
00:33:42,928 --> 00:33:44,236
post-registration staff

1011
00:33:44,240 --> 00:33:46,700
may suspend on their own initiative

1012
00:33:46,700 --> 00:33:48,340
or upon request, examination

1013
00:33:48,340 --> 00:33:50,656
while relevant TMA proceedings are ongoing,

1014
00:33:50,660 --> 00:33:51,818
if otherwise appropriate.

1015
00:33:51,818 --> 00:33:52,590
So again,

1016
00:33:52,590 --> 00:33:54,315
there's lots of different proceedings

1017
00:33:54,315 --> 00:33:56,384
where the same registration may be

1018
00:33:56,384 --> 00:33:58,124
relevant and the the suspension rules

1019
00:33:58,124 --> 00:33:59,782
that you normally that you're used

1020
00:33:59,782 --> 00:34:01,497
to at the Board they apply here.

1021
00:34:01,500 --> 00:34:03,894
So we can suspend examination here

1022
00:34:03,894 --> 00:34:06,589
or here depending on what you need.

1023
00:34:06,590 --> 00:34:10,895
So that is contemplated by the rules.

1024
00:34:10,900 --> 00:34:12,241
Few more things.

1025
00:34:12,241 --> 00:34:14,476
Section 7 request for amendment.

1026
00:34:14,480 --> 00:34:16,601
We actually already had a case where

1027
00:34:16,601 --> 00:34:19,167
a Section 7 request for amendment to

1028
00:34:19,167 --> 00:34:21,555
narrow an identification of goods and

1029
00:34:21,618 --> 00:34:23,704
services was actually pending prior

1030
00:34:23,704 --> 00:34:25,736
to the filing of the TMA petition and

1031
00:34:25,736 --> 00:34:27,877
it was relevant to the TMA petition.

1032
00:34:27,880 --> 00:34:30,036
So once the TMA examiner realized that

1033
00:34:30,036 --> 00:34:32,498
the Section 7 request was outstanding,

1034
00:34:32,500 --> 00:34:34,315
she asked the post-registration

1035
00:34:34,315 --> 00:34:36,130
unit to expedite the processing

1036
00:34:36,192 --> 00:34:37,812
of it, of the registrant's request.

1037
00:34:37,812 --> 00:34:40,214
So we were actually able to issue

1038
00:34:40,214 --> 00:34:41,929
a notice of non-institution

1039
00:34:41,930 --> 00:34:43,856
because the registration had had been

1040
00:34:43,856 --> 00:34:46,609
amended by way of that Section 7 request

1041
00:34:46,609 --> 00:34:48,715
to narrow that identification of good

1042
00:34:48,773 --> 00:34:51,230
and services and moot the TMA proceeding.

1043
00:34:51,230 --> 00:34:52,594
So in that case,

1044
00:34:52,594 --> 00:34:54,640
the petitioner probably should have checked

1045
00:34:54,706 --> 00:34:56,992
to see if there was a a Section 7

1046
00:34:56,992 --> 00:34:59,050
request pending already because they

1047
00:34:59,050 --> 00:35:01,127
would have saved themselves $400.

1048
00:35:01,127 --> 00:35:01,801
So again,

1049
00:35:01,801 --> 00:35:04,910
I I think I've raised this in the past.

1050
00:35:04,910 --> 00:35:07,300
Please clean up your registrations,

1051
00:35:07,300 --> 00:35:09,178
anything that you're not using the

1052
00:35:09,178 --> 00:35:11,260
mark for the goods and services,

1053
00:35:11,260 --> 00:35:12,472
do a Section 7

1054
00:35:12,472 --> 00:35:14,290
request for amendment before you

1055
00:35:14,348 --> 00:35:16,301
get subject to a TMA proceeding. And

1056
00:35:16,301 --> 00:35:18,773
so you don't get dragged into one of

1057
00:35:18,773 --> 00:35:20,692
these proceedings. Clean up your registration,

1058
00:35:20,692 --> 00:35:23,086
eliminate the goods and services out of

1059
00:35:23,086 --> 00:35:24,790
your registration that are not in use.

1060
00:35:24,790 --> 00:35:26,250
It is a zero fee.

1061
00:35:26,250 --> 00:35:28,812
We will not charge you when you're

1062
00:35:28,812 --> 00:35:31,062
deleting goods and services out of

1063
00:35:31,062 --> 00:35:33,222
the from the Section 7 request.

1064
00:35:33,230 --> 00:35:33,577
Uhm.

1065
00:35:33,577 --> 00:35:33,924
Again,

1066
00:35:33,924 --> 00:35:37,430
I I think I I talked about this earlier,

1067
00:35:37,430 --> 00:35:40,930
but I just want to go over it one more time.

1068
00:35:40,930 --> 00:35:41,179
Deletions.

1069
00:35:41,179 --> 00:35:42,922
You can again file this Section 7

1070
00:35:42,922 --> 00:35:44,538
request to amend the registration and

1071
00:35:44,538 --> 00:35:46,456
delete the goods before you even get

1072
00:35:46,456 --> 00:35:48,046
pulled into one of these proceedings.

1073
00:35:48,050 --> 00:35:50,106
Or you can do it while you're in

1074
00:35:50,106 --> 00:35:51,805
the proceeding if you want to.

1075
00:35:51,805 --> 00:35:54,360
The registrant can just respond to that

1076
00:35:54,360 --> 00:35:56,877
TMA office action by requesting deletion

1077
00:35:56,877 --> 00:35:59,457
of the challenged goods and services.

1078
00:35:59,460 --> 00:36:01,431
It's an easy way to just get out of

1079
00:36:01,431 --> 00:36:03,393
the proceeding and and just delete

1080
00:36:03,393 --> 00:36:05,078
the unused goods and services.

1081
00:36:07,520 --> 00:36:09,170
The registrant could decide not to

1082
00:36:09,170 --> 00:36:11,129
respond to the office action and let

1083
00:36:11,129 --> 00:36:13,019
those goods and services just fall away.

1084
00:36:13,020 --> 00:36:15,040
They'll they'll just be automatically

1085
00:36:15,040 --> 00:36:17,110
cancelled so the registrant could just

1086
00:36:17,110 --> 00:36:19,093
ignore the office action and let

1087
00:36:19,093 --> 00:36:20,997
them, let those those unused goods go.

1088
00:36:21,000 --> 00:36:23,670
But however. If the deletion, the

1089
00:36:23,670 --> 00:36:25,936
the the examiner requires deletion

1090
00:36:25,936 --> 00:36:28,757
in the office action for the TMA,

1091
00:36:28,760 --> 00:36:30,525
if that happens simultaneously while

1092
00:36:30,525 --> 00:36:33,031
the same registration is in in the

1093
00:36:33,031 --> 00:36:34,726
middle of a maintenance examination,

1094
00:36:34,730 --> 00:36:36,182
including an audit,

1095
00:36:36,182 --> 00:36:38,173
there's a $250 deletion fee

1096
00:36:38,173 --> 00:36:38,514
penalty.

1097
00:36:38,514 --> 00:36:41,190
So to the extent that it, within

1098
00:36:41,190 --> 00:36:42,879
the maintenance examination,

1099
00:36:42,880 --> 00:36:44,931
the goods there are goods and services

1100
00:36:44,931 --> 00:36:46,672
that are required to be deleted

1101
00:36:46,672 --> 00:36:48,280
in response to an office action.

1102
00:36:48,280 --> 00:36:50,805
There's a $250 deletion fee

1103
00:36:50,805 --> 00:36:51,877
penalty. If that happens

1104
00:36:51,877 --> 00:36:53,880
at the same time you're in a TMA proceeding,

1105
00:36:53,880 --> 00:36:55,456
you're going to have to pay that penalty.

1106
00:36:55,460 --> 00:36:57,152
Just, you know, you can't get out of it

1107
00:36:57,152 --> 00:36:59,047
by virtue of deleting within the TMA.

1108
00:36:59,050 --> 00:37:00,618
We're not going to double charge you,

1109
00:37:00,620 --> 00:37:02,762
but you can't get out of it simply because

1110
00:37:02,762 --> 00:37:04,686
you're in a different proceeding where

1111
00:37:04,686 --> 00:37:06,316
you're deleting goods and services.

1112
00:37:06,320 --> 00:37:07,044
Now remember,

1113
00:37:07,044 --> 00:37:09,940
if you don't pay that deletion fee penalty,

1114
00:37:09,940 --> 00:37:11,890
the entire registration is cancelled.

1115
00:37:11,890 --> 00:37:13,220
It's not just the goods and services

1116
00:37:13,220 --> 00:37:15,250
that are at issue, it's the entire thing.

1117
00:37:15,250 --> 00:37:16,725
So keep that in mind.

1118
00:37:16,730 --> 00:37:19,068
That deletion fee is a penalty and

1119
00:37:19,068 --> 00:37:21,327
it's designed to make sure that

1120
00:37:21,327 --> 00:37:23,297
that folks are keeping their

1121
00:37:23,297 --> 00:37:25,528
registrations as accurate as possible.

1122
00:37:25,530 --> 00:37:28,900
Now we're learning a lot about

1123
00:37:28,900 --> 00:37:30,646
these proceedings and and it's the

1124
00:37:30,646 --> 00:37:32,473
the people who are working on it

1125
00:37:32,473 --> 00:37:33,933
actually really enjoy it because

1126
00:37:33,933 --> 00:37:35,408
it's it's high-level thinking.

1127
00:37:35,410 --> 00:37:38,126
It's policy making on every single petition.

1128
00:37:38,130 --> 00:37:38,986
We're learning a lot.

1129
00:37:38,986 --> 00:37:39,628
We've got some,

1130
00:37:39,630 --> 00:37:40,990
some unexpected petitions coming

1131
00:37:40,990 --> 00:37:43,482
in that we we didn't think were,

1132
00:37:43,482 --> 00:37:45,050
we didn't really contemplate.

1133
00:37:45,050 --> 00:37:47,060
But, you know, they they work.

1134
00:37:47,060 --> 00:37:49,760
They're working in the context of

1135
00:37:49,760 --> 00:37:51,410
these proceedings. We had a

1136
00:37:51,410 --> 00:37:51,910
for example,

1137
00:37:51,910 --> 00:37:53,614
we had a petition that alleged

1138
00:37:53,614 --> 00:37:55,300
nonuse in interstate commerce.

1139
00:37:55,300 --> 00:37:57,200
There was clearly use in

1140
00:37:57,200 --> 00:37:57,960
intrastate commerce,

1141
00:37:57,960 --> 00:37:59,350
but the petition offered evidence

1142
00:37:59,350 --> 00:38:01,869
of of nonuse in interstate commerce.

1143
00:38:01,870 --> 00:38:03,160
It was good prima facie evidence.

1144
00:38:03,160 --> 00:38:04,652
So we instituted proceedings.

1145
00:38:04,652 --> 00:38:06,890
Another fact pattern that arose was where

1146
00:38:06,952 --> 00:38:08,468
the original specimens submitted

1147
00:38:08,468 --> 00:38:10,363
during examination did not show

1148
00:38:10,363 --> 00:38:12,640
use in commerce for this specific

1149
00:38:12,640 --> 00:38:14,480
goods identified in the application.

1150
00:38:14,480 --> 00:38:16,410
So obviously the original examining

1151
00:38:16,410 --> 00:38:18,715
attorney just missed the issue that

1152
00:38:18,715 --> 00:38:20,864
the the specimen didn't match the ID.

1153
00:38:20,870 --> 00:38:22,664
But now we have an opportunity

1154
00:38:22,664 --> 00:38:23,860
to fix that mistake,

1155
00:38:23,860 --> 00:38:26,608
since the petitioner brought it forward.

1156
00:38:26,610 --> 00:38:28,442
So we're going to do that. This this

1157
00:38:28,442 --> 00:38:30,186
is this is to fix our mistakes.

1158
00:38:30,190 --> 00:38:31,715
That's reexamination. Another variant

1159
00:38:31,715 --> 00:38:33,993
of this kind of case was where

1160
00:38:33,993 --> 00:38:35,733
the specimen that was originally

1161
00:38:35,733 --> 00:38:37,217
submitted identified a website

1162
00:38:37,217 --> 00:38:38,757
that never actually existed.

1163
00:38:38,760 --> 00:38:41,200
And these were the kinds of goods that

1164
00:38:41,200 --> 00:38:43,057
typically would be sold on a website.

1165
00:38:43,060 --> 00:38:44,860
So defects in the original

1166
00:38:44,860 --> 00:38:46,300
specimens submitted are something,

1167
00:38:46,300 --> 00:38:47,966
we will look at carefully to determine

1168
00:38:47,966 --> 00:38:49,738
if a prima facie case is made

1169
00:38:49,738 --> 00:38:51,250
for the goods and services that

1170
00:38:51,307 --> 00:38:52,639
the specimen was supposed

1171
00:38:52,639 --> 00:38:53,638
to originally support.

1172
00:38:53,640 --> 00:38:55,168
So again, you know,

1173
00:38:55,168 --> 00:38:56,702
these were unexpected, but

1174
00:38:56,702 --> 00:38:58,612
it's perfectly contemplated within the

1175
00:38:58,612 --> 00:39:01,344
statute and we're happy to go with the

1176
00:39:01,344 --> 00:39:03,054
flow and and make these proceedings

1177
00:39:03,117 --> 00:39:05,629
work for a bunch of different fact patterns.

1178
00:39:05,630 --> 00:39:08,198
So that's really what I wanted

1179
00:39:08,198 --> 00:39:09,990
to to cover today.

1180
00:39:09,990 --> 00:39:12,315
Certainly we've got questions coming,

1181
00:39:12,320 --> 00:39:14,070
but I do think we'll probably need

1182
00:39:14,070 --> 00:39:15,990
to get together again in the future

1183
00:39:15,990 --> 00:39:17,670
to discuss again how these petitions

1184
00:39:17,720 --> 00:39:19,316
are going and what we're seeing.

1185
00:39:19,320 --> 00:39:21,138
But in the meantime for,

1186
00:39:21,140 --> 00:39:23,188
you know, up-to-date information,

1187
00:39:23,188 --> 00:39:25,236
follow our webpage updates.

1188
00:39:25,240 --> 00:39:27,180
Look for our improvements to

1189
00:39:27,180 --> 00:39:29,203
and transparency to make sure that you

1190
00:39:29,203 --> 00:39:31,219
see these petitions and see our decisions.

1191
00:39:31,220 --> 00:39:33,281
We really did a lot of work with you

1192
00:39:33,281 --> 00:39:35,778
all, with your help, to make these

1193
00:39:35,778 --> 00:39:37,246
proceedings available and certainly

1194
00:39:37,311 --> 00:39:39,145
if no one is interested in them

1195
00:39:39,150 --> 00:39:40,360
because they don't operate the

1196
00:39:40,360 --> 00:39:41,570
way that everyone thought, that

1197
00:39:41,617 --> 00:39:42,927
that's not in anybody's interest.

1198
00:39:42,930 --> 00:39:44,818
So we really do want to make sure

1199
00:39:44,818 --> 00:39:46,890
these work and and we're we're happy to

1200
00:39:46,890 --> 00:39:49,265
continue to to work with you all to do that.

1201
00:39:49,270 --> 00:39:51,090
So let's stay in touch about this

1202
00:39:51,090 --> 00:39:53,143
and I would like to take your

1203
00:39:53,143 --> 00:39:54,355
questions at this point.

1204
00:39:54,360 --> 00:39:58,096
I believe we have a number of questions.

1205
00:39:58,100 --> 00:40:00,290
So we will

1206
00:40:00,290 --> 00:40:03,338
go back to the beginning and Bob and

1207
00:40:03,338 --> 00:40:07,090
Montia will help me as we go through.

1208
00:40:07,090 --> 00:40:07,627
OK.

1209
00:40:07,627 --> 00:40:12,460
So we have at least four questions so far.

1210
00:40:12,460 --> 00:40:15,575
So the first question is. A TMA

1211
00:40:15,580 --> 00:40:18,562
costs $400 and requires a verified

1212
00:40:18,562 --> 00:40:20,550
statement of reasonable investigation

1213
00:40:20,627 --> 00:40:22,379
and documentary evidence.

1214
00:40:22,380 --> 00:40:25,865
It would probably take more than $200

1215
00:40:25,865 --> 00:40:28,630
worth of time to put this together.

1216
00:40:28,630 --> 00:40:30,270
A cancellation petition costs

1217
00:40:30,270 --> 00:40:32,730
$600 and does not require the

1218
00:40:32,806 --> 00:40:34,998
same investigation or evidence.

1219
00:40:35,000 --> 00:40:36,740
That seems like much less work

1220
00:40:36,740 --> 00:40:38,450
to file a cancellation petition.

1221
00:40:38,450 --> 00:40:41,567
Why would anyone file a TMA proceeding,

1222
00:40:41,567 --> 00:40:42,161
I guess?

1223
00:40:42,161 --> 00:40:44,240
And I think the answer to that

1224
00:40:44,303 --> 00:40:46,223
question and and I have not

1225
00:40:46,223 --> 00:40:47,503
practiced before the Board,

1226
00:40:47,510 --> 00:40:50,233
but I do think that anyone who's

1227
00:40:50,233 --> 00:40:52,525
filing a petition for cancellation

1228
00:40:52,525 --> 00:40:55,135
has obligations under Rule 11,

1229
00:40:55,140 --> 00:40:56,160
if I'm not mistaken,

1230
00:40:56,160 --> 00:40:58,443
37 CFR Rule 11 to make sure that

1231
00:40:58,443 --> 00:41:00,178
anything that they filed there

1232
00:41:00,180 --> 00:41:02,155
is supported by investigation and

1233
00:41:02,155 --> 00:41:04,730
was not filed for improper purpose.

1234
00:41:04,730 --> 00:41:09,077
So we weren't not, necessarily trying to

1235
00:41:09,080 --> 00:41:11,372
require more than required in a

1236
00:41:11,372 --> 00:41:13,649
petition for cancellation at the TTAB.

1237
00:41:13,649 --> 00:41:16,029
Really that the same thing is required.

1238
00:41:16,030 --> 00:41:17,983
So I I I take issue with the question

1239
00:41:17,983 --> 00:41:19,957
that I I don't think that the

1240
00:41:19,957 --> 00:41:21,706
requirements are any different for a

1241
00:41:21,706 --> 00:41:23,101
nonuse cancellation petition filed

1242
00:41:23,101 --> 00:41:25,652
at the Board versus a TMA petition.

1243
00:41:25,652 --> 00:41:28,794
And presumably you would file a TMA

1244
00:41:28,794 --> 00:41:31,275
petition because you don't want to

1245
00:41:31,275 --> 00:41:33,725
necessarily pay, take the chance of

1246
00:41:33,725 --> 00:41:36,061
not getting a default judgment and

1247
00:41:36,061 --> 00:41:38,938
you want to avoid attorneys fees if

1248
00:41:38,940 --> 00:41:40,705
perchance there is no default

1249
00:41:40,705 --> 00:41:42,470
judgment and you are proceeding

1250
00:41:42,533 --> 00:41:44,618
through litigation before the Board.

1251
00:41:44,620 --> 00:41:46,540
The other point to make is and a

1252
00:41:46,540 --> 00:41:47,576
default proceeding, default judgment

1253
00:41:47,576 --> 00:41:49,333
at the Board can be very quick,

1254
00:41:49,340 --> 00:41:51,180
but again it's a risk.

1255
00:41:51,180 --> 00:41:53,172
With with our proceedings, we're hoping

1256
00:41:53,172 --> 00:41:55,935
to get these faster and faster as we get

1257
00:41:55,935 --> 00:41:57,950
used to them and hopefully they will,

1258
00:41:57,950 --> 00:42:00,820
you know, facilitate mark clearance.

1259
00:42:00,820 --> 00:42:02,180
The idea being you find a mark that

1260
00:42:02,180 --> 00:42:03,486
you want to get off the register,

1261
00:42:03,490 --> 00:42:05,008
you believe you've done your investigation,

1262
00:42:05,010 --> 00:42:06,354
you have documented evidence

1263
00:42:06,354 --> 00:42:08,370
nonuse, and you want that gone

1264
00:42:08,370 --> 00:42:10,824
so it no longer blocks your

1265
00:42:10,824 --> 00:42:12,845
application. And these proceedings are

1266
00:42:12,845 --> 00:42:15,015
intended to allow you to do that

1267
00:42:15,020 --> 00:42:17,995
more quickly than a regular Board proceeding.

1268
00:42:18,000 --> 00:42:20,317
Again, default judgment can be very quick.

1269
00:42:20,320 --> 00:42:21,868
It's a choice you have to

1270
00:42:21,868 --> 00:42:23,180
make which way you want to go.

1271
00:42:23,180 --> 00:42:24,962
And remember at the TTAB it's

1272
00:42:24,962 --> 00:42:26,688
a $600 petition fee.

1273
00:42:26,688 --> 00:42:30,020
You can get a refund if there

1274
00:42:30,125 --> 00:42:32,309
is a default judgment.

1275
00:42:32,310 --> 00:42:34,020
Which comes out to the same

1276
00:42:34,020 --> 00:42:35,890
price as a TMA proceeding.

1277
00:42:35,890 --> 00:42:38,090
That was kind of intentional.

1278
00:42:38,090 --> 00:42:41,608
So that is the first question. OK.

1279
00:42:41,608 --> 00:42:44,184
Is there anything you want to add

1280
00:42:44,184 --> 00:42:46,982
Bob or Montia on that one? -I yeah.

1281
00:42:46,982 --> 00:42:48,848
I mean I think that's, that's it,

1282
00:42:48,848 --> 00:42:49,556
it's the

1283
00:42:49,556 --> 00:42:52,909
it's part of it is strategic and tactical, right?

1284
00:42:52,910 --> 00:42:54,953
What do you think is going to be the

1285
00:42:54,953 --> 00:42:57,247
result if you file a petition with the Board.

1286
00:42:57,250 --> 00:42:58,888
Are you likely to get a default?

1287
00:42:58,890 --> 00:43:01,185
Then maybe it's a it's a wash. And then

1288
00:43:01,185 --> 00:43:03,979
the other issue of course is these TMA

1289
00:43:03,979 --> 00:43:05,828
proceedings are limited only to use,

1290
00:43:05,830 --> 00:43:08,205
whereas petition to cancel before

1291
00:43:08,205 --> 00:43:11,290
the Board has many possible grounds.

1292
00:43:11,290 --> 00:43:13,060
And then there's also the idea

1293
00:43:13,060 --> 00:43:15,360
of who has the burden when you

1294
00:43:15,360 --> 00:43:17,968
when you file these.

1295
00:43:17,970 --> 00:43:18,390
Here,

1296
00:43:18,390 --> 00:43:20,490
you're effectively filing your petition,

1297
00:43:20,490 --> 00:43:21,930
and then if it's instituted,

1298
00:43:21,930 --> 00:43:24,729
the burden is on the registrant to prove use.

1299
00:43:24,730 --> 00:43:26,002
Whereas in a

1300
00:43:26,002 --> 00:43:28,122
petition to cancel before the

1301
00:43:28,122 --> 00:43:30,079
Board that goes forward,

1302
00:43:30,080 --> 00:43:32,145
it could get much more complicated and

1303
00:43:32,150 --> 00:43:34,719
the burden might be on the petitioner.

1304
00:43:37,610 --> 00:43:40,769
-Anything about rule 11 that you want to say?

1305
00:43:40,770 --> 00:43:41,945
-Yeah, there shouldn't be any

1306
00:43:41,945 --> 00:43:42,771
difference there, right?

1307
00:43:42,771 --> 00:43:45,579
I mean it attorney making a filing a,

1308
00:43:45,580 --> 00:43:47,512
you know, establishing prima facie case

1309
00:43:47,512 --> 00:43:50,026
of nonuse, it's going to be the same

1310
00:43:50,026 --> 00:43:52,275
level of of work I would think and

1311
00:43:52,275 --> 00:43:54,315
possibly more with the petition to

1312
00:43:54,315 --> 00:43:57,160
cancel before the Board but that's

1313
00:43:57,160 --> 00:43:58,858
you know, conjecture on my part.

1314
00:43:58,860 --> 00:44:00,590
I think that practitioners out

1315
00:44:00,590 --> 00:44:02,819
there would have a better idea of

1316
00:44:02,820 --> 00:44:04,986
the amount of work involved there.

1317
00:44:04,990 --> 00:44:07,276
-Fair enough. OK.

1318
00:44:07,276 --> 00:44:08,168
Next question,

1319
00:44:08,168 --> 00:44:10,844
can one bring a TTAB cancellation

1320
00:44:10,844 --> 00:44:13,874
proceeding after bringing an unsuccessful

1321
00:44:13,874 --> 00:44:16,386
expungement or reexamination proceeding?

1322
00:44:16,390 --> 00:44:21,305
Yes, there is no estoppel with regard to

1323
00:44:21,305 --> 00:44:24,030
TMA proceedings that are unsuccessful.

1324
00:44:24,030 --> 00:44:25,735
So certainly that petitioner or

1325
00:44:25,735 --> 00:44:28,459
real party in interest can go to the

1326
00:44:28,459 --> 00:44:30,049
Board and challenge the registration

1327
00:44:30,049 --> 00:44:31,510
for the same reasons.

1328
00:44:31,510 --> 00:44:34,350
There is no estoppel, no no claim preclusion.

1329
00:44:34,350 --> 00:44:35,103
So great question.

1330
00:44:35,103 --> 00:44:36,358
Thank you for raising that.

1331
00:44:39,940 --> 00:44:42,095
Is expungement 10-year limit

1332
00:44:42,095 --> 00:44:44,635
waiver really until December 2024?

1333
00:44:44,635 --> 00:44:48,710
Oh, you are correct, sir.

1334
00:44:48,710 --> 00:44:50,588
It's a typo. I am sorry.

1335
00:44:50,590 --> 00:44:55,391
Yes, so TMA passed in 2020, December 2020.

1336
00:44:55,391 --> 00:44:59,074
So there was a three-year period for

1337
00:44:59,074 --> 00:45:01,715
expungement to be available at any

1338
00:45:01,715 --> 00:45:04,655
age over three years and that would

1339
00:45:04,655 --> 00:45:07,490
end, math is not my strong suit,

1340
00:45:07,490 --> 00:45:10,291
sorry that would end on 2023.

1341
00:45:10,291 --> 00:45:10,813
So questioner,

1342
00:45:10,813 --> 00:45:12,118
I really appreciate that. We'll

1343
00:45:12,118 --> 00:45:13,710
have to we'll have to fix that.

1344
00:45:13,710 --> 00:45:15,228
My my bad very sorry about

1345
00:45:15,228 --> 00:45:16,240
that. You are correct.

1346
00:45:18,250 --> 00:45:20,490
Uh, next question, how much does it cost

1347
00:45:20,490 --> 00:45:22,861
to file one of these? $400 per class.

1348
00:45:22,861 --> 00:45:24,596
How long does it take?

1349
00:45:24,600 --> 00:45:27,666
It depends on how quickly everybody moves.

1350
00:45:27,670 --> 00:45:30,328
They're designed to take somewhere around,

1351
00:45:30,330 --> 00:45:31,802
well they can be,

1352
00:45:31,802 --> 00:45:35,388
they could be as fast as a three months.

1353
00:45:35,390 --> 00:45:37,875
They may hopefully take no more than

1354
00:45:37,875 --> 00:45:40,591
six to seven months, but you know,

1355
00:45:40,591 --> 00:45:43,502
as we're still finding our footing, it it's

1356
00:45:43,502 --> 00:45:46,238
taking us awhile to sort of figure out,

1357
00:45:46,240 --> 00:45:47,632
you know, work through these cases

1358
00:45:47,632 --> 00:45:49,357
and making sure we're making the

1359
00:45:49,357 --> 00:45:50,479
appropriate institution decisions.

1360
00:45:50,480 --> 00:45:52,076
Now the registrant has three months,

1361
00:45:52,080 --> 00:45:53,312
extendable another month to

1362
00:45:53,312 --> 00:45:54,852
respond to the first action.

1363
00:45:54,860 --> 00:45:57,340
So a lot depends on how quickly the

1364
00:45:57,340 --> 00:45:59,516
the registrant will respond as to

1365
00:45:59,516 --> 00:46:01,656
how quickly these proceedings will go.

1366
00:46:01,656 --> 00:46:03,917
But the idea that we were shooting

1367
00:46:03,920 --> 00:46:05,232
for was somewhere between

1368
00:46:05,232 --> 00:46:06,544
six and nine months,

1369
00:46:06,550 --> 00:46:08,360
if it all, you know,

1370
00:46:08,360 --> 00:46:10,520
extensions and and the full

1371
00:46:10,520 --> 00:46:12,680
time was taken for everything.

1372
00:46:12,680 --> 00:46:14,556
What are the risks to the filer?

1373
00:46:14,560 --> 00:46:18,795
Um to the risk to the petitioner.

1374
00:46:18,800 --> 00:46:19,260
$400.

1375
00:46:19,260 --> 00:46:23,230
Anything else on that, Bob?

1376
00:46:23,230 --> 00:46:25,288
-Well, I mean it's like anything else,

1377
00:46:25,290 --> 00:46:25,691
right?

1378
00:46:25,691 --> 00:46:28,097
When you bring up an action

1379
00:46:28,100 --> 00:46:29,736
potentially affecting someone's rights,

1380
00:46:29,736 --> 00:46:32,538
then I think the practitioners out there

1381
00:46:32,538 --> 00:46:34,844
have to consider the potential litigation

1382
00:46:34,844 --> 00:46:38,306
risks that might arise from that.

1383
00:46:38,310 --> 00:46:38,822
Right.

1384
00:46:38,822 --> 00:46:41,894
So if there's dueling registrations and

1385
00:46:41,900 --> 00:46:44,516
obviously that could be a trigger to

1386
00:46:44,520 --> 00:46:47,664
some sort of counterlitigation in

1387
00:46:47,664 --> 00:46:51,499
another venue or, you know, potentially,

1388
00:46:51,500 --> 00:46:54,620
that party filing a petition

1389
00:46:54,620 --> 00:46:56,960
against the petitioners

1390
00:46:56,960 --> 00:46:58,720
uh

1391
00:46:58,720 --> 00:46:59,696
registration, right?

1392
00:46:59,696 --> 00:47:02,624
So, but that's it's not really

1393
00:47:02,624 --> 00:47:05,640
within the scope of this, this is

1394
00:47:05,640 --> 00:47:07,765
again, that's more of a

1395
00:47:07,770 --> 00:47:08,696
practitioner's consideration.

1396
00:47:08,696 --> 00:47:11,342
-That's not our lane. -Right.

1397
00:47:11,342 --> 00:47:12,134
-Yep.

1398
00:47:12,134 --> 00:47:13,718
-Got it.

1399
00:47:13,718 --> 00:47:14,510
OK.

1400
00:47:14,510 --> 00:47:15,174
Next question.

1401
00:47:15,174 --> 00:47:17,498
Has the USPTO set a time benchmark

1402
00:47:17,498 --> 00:47:19,935
for how quickly it would make an

1403
00:47:19,935 --> 00:47:21,920
institution decision on a petition?

1404
00:47:21,920 --> 00:47:23,838
How about how benchmark for how quickly

1405
00:47:23,838 --> 00:47:26,026
it will act on an office action

1406
00:47:26,026 --> 00:47:27,666
response from a registrant overall.

1407
00:47:27,670 --> 00:47:29,595
Can you forecast how quickly the USPTO

1408
00:47:29,595 --> 00:47:31,268
will turn around these two items?

1409
00:47:31,270 --> 00:47:33,620
No.

1410
00:47:33,620 --> 00:47:35,280
I would like to. Certainly we're

1411
00:47:35,280 --> 00:47:37,280
moving as fast as we can.

1412
00:47:37,280 --> 00:47:40,061
So it's it's a function of not knowing how

1413
00:47:40,061 --> 00:47:42,736
many petitions we were going to receive,

1414
00:47:42,740 --> 00:47:44,595
how many examiners we would need to

1415
00:47:44,595 --> 00:47:46,896
to pull in to deal with these cases,

1416
00:47:46,900 --> 00:47:49,609
how complex the cases are in trying

1417
00:47:49,609 --> 00:47:51,900
to make institution determinations,

1418
00:47:51,900 --> 00:47:54,018
how much research will the examiner

1419
00:47:54,018 --> 00:47:57,212
need to do to check up on the

1420
00:47:57,212 --> 00:47:59,337
investigation done by the petitioner.

1421
00:47:59,340 --> 00:48:00,670
So there's lots of different

1422
00:48:00,670 --> 00:48:02,293
variables and we don't have enough

1423
00:48:02,293 --> 00:48:03,757
experience to be able to say,

1424
00:48:03,760 --> 00:48:05,080
"This is how long it's going to take.

1425
00:48:05,080 --> 00:48:06,238
It's going to take two weeks.

1426
00:48:06,240 --> 00:48:08,358
It's going to take one month."

1427
00:48:08,360 --> 00:48:10,270
When we have more experience,

1428
00:48:10,270 --> 00:48:12,526
I think I'll be able to benchmark it.

1429
00:48:12,530 --> 00:48:14,730
Uhm, but I I can't really do that right now.

1430
00:48:14,730 --> 00:48:17,238
I don't think it's it's reasonable.

1431
00:48:17,240 --> 00:48:18,948
I don't think it would be a

1432
00:48:18,948 --> 00:48:20,567
good prediction as to how long

1433
00:48:20,567 --> 00:48:21,957
these things would would take.

1434
00:48:21,960 --> 00:48:25,236
So obviously we don't want to be,

1435
00:48:25,240 --> 00:48:26,428
we don't want to be slow.

1436
00:48:26,430 --> 00:48:27,430
We want to move these

1437
00:48:27,430 --> 00:48:28,660
things as quickly as we can.

1438
00:48:28,660 --> 00:48:30,438
That's the whole point of these proceedings.

1439
00:48:30,440 --> 00:48:32,304
So as I said, we're trying to make

1440
00:48:32,304 --> 00:48:34,051
sure we balance the interest there

1441
00:48:34,051 --> 00:48:36,489
because we have done a whole lot of

1442
00:48:36,489 --> 00:48:38,393
work in trying to set these proceedings

1443
00:48:38,393 --> 00:48:40,602
up and making them work and they

1444
00:48:40,602 --> 00:48:43,070
need to work and we know that.

1445
00:48:43,070 --> 00:48:44,726
So we will do everything we can to

1446
00:48:44,726 --> 00:48:46,710
try to move things along to make

1447
00:48:46,710 --> 00:48:48,225
them valuable to our stakeholders.

1448
00:48:48,230 --> 00:48:50,130
And so at this point,

1449
00:48:50,130 --> 00:48:51,390
I can't give you a benchmark,

1450
00:48:51,390 --> 00:48:53,670
but maybe in six months, maybe in a year,

1451
00:48:53,670 --> 00:48:54,886
I'll be able to well, six months.

1452
00:48:54,886 --> 00:48:56,580
I might be able to give you a benchmark.

1453
00:48:56,580 --> 00:48:58,700
So let's get back together next year or

1454
00:48:58,700 --> 00:49:02,440
in six months and then I'll tell you. OK.

1455
00:49:02,440 --> 00:49:04,440
If submitting WayBack machine evidence,

1456
00:49:04,440 --> 00:49:08,860
does it have to be certified? No.

1457
00:49:08,860 --> 00:49:11,618
Uhm, we just need the dates that

1458
00:49:11,618 --> 00:49:13,520
you, the search covered.

1459
00:49:13,520 --> 00:49:15,456
We need the URL.

1460
00:49:15,456 --> 00:49:18,360
We need the date it was accessed.

1461
00:49:18,473 --> 00:49:20,369
And that's normal

1462
00:49:20,370 --> 00:49:21,442
normal type of documentary

1463
00:49:21,442 --> 00:49:22,782
evidence that we're looking for.

1464
00:49:22,790 --> 00:49:24,176
We're not looking for anything certified.

1465
00:49:24,180 --> 00:49:25,428
Is that right, Bob?

1466
00:49:25,428 --> 00:49:25,740
-Yeah.

1467
00:49:25,740 --> 00:49:27,786
And the entire petition is submitted

1468
00:49:27,786 --> 00:49:29,464
under a verified statement and

1469
00:49:29,464 --> 00:49:32,670
subject to 18 USC 1001 and Rule ll.18.

1470
00:49:32,670 --> 00:49:34,106
So again, you know,

1471
00:49:34,106 --> 00:49:36,817
you have to do your homework on these

1472
00:49:36,817 --> 00:49:39,222
and you're certifying that what

1473
00:49:39,222 --> 00:49:41,530
you're submitting is true and

1474
00:49:41,530 --> 00:49:44,634
that there's a reasonable basis for doing so.

1475
00:49:44,640 --> 00:49:46,280
-Yep.

1476
00:49:46,280 --> 00:49:47,940
Next question. Is the prosecution

1477
00:49:47,940 --> 00:49:49,600
history of the challenge registration

1478
00:49:49,654 --> 00:49:50,890
automatically in evidence?

1479
00:49:50,890 --> 00:49:52,714
That's a great question.

1480
00:49:52,714 --> 00:49:54,855
We've had this debate. Yes.

1481
00:49:54,855 --> 00:49:55,485
You know,

1482
00:49:55,485 --> 00:49:57,375
if if it's the challenge registration,

1483
00:49:57,380 --> 00:50:00,754
everything you know is is. We can rely,

1484
00:50:00,754 --> 00:50:01,310
we can,

1485
00:50:01,310 --> 00:50:03,414
we can look at anything in that registration.

1486
00:50:03,420 --> 00:50:05,184
But I will say. If you want us to

1487
00:50:05,184 --> 00:50:06,684
see something in particular, if

1488
00:50:06,684 --> 00:50:08,550
you want to draw our attention

1489
00:50:08,606 --> 00:50:10,078
to something in particular,

1490
00:50:10,080 --> 00:50:12,340
give us that relevant evidence.

1491
00:50:12,340 --> 00:50:14,455
If you, if it's buried inside a whole file,

1492
00:50:14,460 --> 00:50:15,488
we may miss it.

1493
00:50:15,488 --> 00:50:17,422
So certainly we are looking at the

1494
00:50:17,422 --> 00:50:19,767
whole prosecution history for the most part,

1495
00:50:19,770 --> 00:50:21,095
but if there's something that's

1496
00:50:21,095 --> 00:50:22,420
really important to your case,

1497
00:50:22,420 --> 00:50:24,118
please bring it to our attention

1498
00:50:24,118 --> 00:50:25,250
by submitting that separately.

1499
00:50:25,250 --> 00:50:27,690
That would be really helpful.

1500
00:50:27,690 --> 00:50:28,500
Anything to add?

1501
00:50:30,550 --> 00:50:33,165
OK. Next. Will an examiner

1502
00:50:33,165 --> 00:50:35,257
suspend an application pending

1503
00:50:35,257 --> 00:50:37,103
expungement or reexamination of

1504
00:50:37,103 --> 00:50:39,593
a registration cited as a basis

1505
00:50:39,593 --> 00:50:42,317
of refusal for that application?

1506
00:50:42,320 --> 00:50:44,220
Yes. Bob saying "Yes."

1507
00:50:47,330 --> 00:50:49,530
OK. -They're talking about, yeah.

1508
00:50:49,530 --> 00:50:50,910
-The 2(d) cite, right? -Normal

1509
00:50:50,910 --> 00:50:53,250
2(d) cite in normal examination.

1510
00:50:53,250 --> 00:50:55,302
I think when they're saying

1511
00:50:55,302 --> 00:50:56,670
"examiner" they're saying "examining attorney" not

1512
00:50:56,737 --> 00:50:58,120
a, not the expungement examiner.

1513
00:50:58,120 --> 00:50:59,994
Right. So. -Yep, exactly.

1514
00:50:59,994 --> 00:51:02,330
So just a nomenclature.

1515
00:51:02,330 --> 00:51:04,538
Again, remember we're not, these are

1516
00:51:04,538 --> 00:51:06,320
not petitions under 2.146. There's

1517
00:51:06,320 --> 00:51:08,330
not, they're not decisions. they're not

1518
00:51:08,330 --> 00:51:10,786
grants. We are calling these TMA

1519
00:51:10,786 --> 00:51:12,510
examiners "examiners," not "examining

1520
00:51:12,510 --> 00:51:14,450
attorneys." Trying to differentiate.

1521
00:51:14,450 --> 00:51:16,970
So we're being kind of careful in

1522
00:51:16,970 --> 00:51:18,769
our nomenclature just to try to

1523
00:51:18,770 --> 00:51:20,618
keep it all straight in our head.

1524
00:51:20,620 --> 00:51:23,228
OK, is there any limit to how often

1525
00:51:23,228 --> 00:51:26,143
and how many times these can be filed

1526
00:51:26,143 --> 00:51:29,118
by either the same or different filer?

1527
00:51:29,120 --> 00:51:30,594
Uhm, yes.

1528
00:51:30,594 --> 00:51:34,279
Well, against the same registration.

1529
00:51:34,280 --> 00:51:36,640
OK, let's talk about estoppel a little bit.

1530
00:51:36,640 --> 00:51:40,830
So under under the TMA,

1531
00:51:40,830 --> 00:51:43,458
once a a registration has been

1532
00:51:43,458 --> 00:51:45,790
challenged and specific goods and

1533
00:51:45,790 --> 00:51:47,778
services have been challenged,

1534
00:51:47,780 --> 00:51:49,151
and it survives,

1535
00:51:49,151 --> 00:51:51,436
the registrant is able to

1536
00:51:51,436 --> 00:51:52,979
produce evidence of use,

1537
00:51:52,980 --> 00:51:55,220
and we terminate the proceedings.

1538
00:51:55,220 --> 00:51:57,560
Those specific goods and services

1539
00:51:57,560 --> 00:51:59,900
that survived cannot be challenged

1540
00:51:59,968 --> 00:52:02,180
again in a in a Director, in a

1541
00:52:02,180 --> 00:52:03,300
proceeding before the Director.

1542
00:52:03,300 --> 00:52:05,540
Like I said before, you can go to the Board,

1543
00:52:05,540 --> 00:52:06,780
you can challenge them there,

1544
00:52:06,780 --> 00:52:09,615
but you can't keep filing serially against,

1545
00:52:09,620 --> 00:52:11,820
though, you know, one specific good or service.

1546
00:52:11,820 --> 00:52:14,599
If it survives, it's, there's estoppel.

1547
00:52:14,600 --> 00:52:17,729
Now you can challenge the same registration.

1548
00:52:17,730 --> 00:52:20,028
So theoretically you could, you know,

1549
00:52:20,030 --> 00:52:22,640
a petitioner could file against one

1550
00:52:22,640 --> 00:52:24,626
good and that good, you know, survives.

1551
00:52:24,626 --> 00:52:26,406
Then the petitioner files another

1552
00:52:26,406 --> 00:52:28,110
one against the next one.

1553
00:52:28,110 --> 00:52:31,358
Now, if we find that this happens,

1554
00:52:31,360 --> 00:52:33,676
we will then consider rulemaking to

1555
00:52:33,676 --> 00:52:35,788
stop that from happening. Right now,

1556
00:52:35,788 --> 00:52:36,072
we,

1557
00:52:36,072 --> 00:52:38,060
as we went through the rulemaking process,

1558
00:52:38,060 --> 00:52:40,400
we decided not to put any limits on the

1559
00:52:40,400 --> 00:52:42,308
amount of time a registration could

1560
00:52:42,308 --> 00:52:44,857
be challenged or the amount of time a puts,

1561
00:52:44,860 --> 00:52:46,780
a particular petitioner could

1562
00:52:46,780 --> 00:52:48,700
challenge numerous registrations,

1563
00:52:48,700 --> 00:52:51,192
but we're watching. To the extent that a,

1564
00:52:51,192 --> 00:52:53,503
one petitioner keeps filing against a

1565
00:52:53,503 --> 00:52:55,861
bunch of different registrations and the

1566
00:52:55,861 --> 00:52:58,258
cases don't appear to be meritorious,

1567
00:52:58,260 --> 00:53:00,144
we will note. That information will

1568
00:53:00,144 --> 00:53:02,551
go to our special task force and

1569
00:53:02,551 --> 00:53:04,361
we will start investigating the

1570
00:53:04,361 --> 00:53:06,814
petitioner to see if they are filing

1571
00:53:06,814 --> 00:53:08,882
for improper purposes under Rule 11.

1572
00:53:08,882 --> 00:53:10,490
If the petitioner starts,

1573
00:53:10,490 --> 00:53:12,120
is filing for improper purposes,

1574
00:53:12,120 --> 00:53:14,664
then we can proceed against that

1575
00:53:14,664 --> 00:53:16,737
particular person with sanctions. And

1576
00:53:16,737 --> 00:53:18,999
we can preclude them from filing

1577
00:53:19,000 --> 00:53:20,908
any further petitions. We can block

1578
00:53:20,908 --> 00:53:23,394
their USPTO.gov account so they can no

1579
00:53:23,394 --> 00:53:25,134
longer file anything before the USPTO.

1580
00:53:25,140 --> 00:53:27,765
So to the extent that somebody uses

1581
00:53:27,765 --> 00:53:30,239
these proceedings to harass registrants,

1582
00:53:30,240 --> 00:53:32,207
we will note it and we will,

1583
00:53:32,210 --> 00:53:33,988
we can deal with it through our

1584
00:53:33,988 --> 00:53:36,170
sanctions program. So keep that in mind.

1585
00:53:36,170 --> 00:53:38,382
But it's already baked into the system

1586
00:53:38,382 --> 00:53:41,247
that if a particular good has been

1587
00:53:41,247 --> 00:53:43,552
challenged and survives the challenge,

1588
00:53:43,560 --> 00:53:46,152
it can no longer be challenged

1589
00:53:46,152 --> 00:53:47,448
by somebody else.

1590
00:53:47,450 --> 00:53:50,882
Ever. Within the Director's sphere,

1591
00:53:50,882 --> 00:53:52,266
the Director proceedings. Again,

1592
00:53:52,270 --> 00:53:54,520
it can go to the Board.

1593
00:53:54,520 --> 00:53:57,454
OK did that. Was I clear on that?

1594
00:53:57,460 --> 00:54:00,968
Alright, good enough. Let's hope.

1595
00:54:00,968 --> 00:54:03,250
OK. Can a petitioner be anonymous in

1596
00:54:03,323 --> 00:54:05,388
the petition and request suspension

1597
00:54:05,388 --> 00:54:08,233
in an application where it is the

1598
00:54:08,233 --> 00:54:10,330
applicant and a 2(d) refusal was issued

1599
00:54:10,330 --> 00:54:12,520
re: the petition registration. Yes.

1600
00:54:14,900 --> 00:54:17,506
Right. 'Cause it's the

1601
00:54:17,506 --> 00:54:18,240
same registration, right?

1602
00:54:20,540 --> 00:54:22,160
So yeah, so petitioner can always

1603
00:54:22,160 --> 00:54:24,092
be an anonymous in the sense that

1604
00:54:24,092 --> 00:54:25,947
it's not the real party in interest.

1605
00:54:25,950 --> 00:54:27,140
It's just a person's name.

1606
00:54:27,140 --> 00:54:28,380
You can't be totally anonymous.

1607
00:54:28,380 --> 00:54:29,416
You have to give us your name.

1608
00:54:29,420 --> 00:54:30,498
You have to give us your address.

1609
00:54:30,500 --> 00:54:31,739
You have to give us your email.

1610
00:54:31,740 --> 00:54:32,964
So you're a person.

1611
00:54:32,964 --> 00:54:34,826
You have to have a USPTO.gov

1612
00:54:34,826 --> 00:54:36,456
account and with ID verification,

1613
00:54:36,460 --> 00:54:37,740
we're going to know who you are. Now

1614
00:54:37,740 --> 00:54:39,350
are you the real party in interest?

1615
00:54:39,350 --> 00:54:40,136
Not necessarily.

1616
00:54:40,136 --> 00:54:42,494
When we did not deal with,

1617
00:54:42,500 --> 00:54:44,444
we did not address that issue in the

1618
00:54:44,444 --> 00:54:45,949
rulemaking because at the end of the day,

1619
00:54:45,950 --> 00:54:48,206
if there's a prima facie case,

1620
00:54:48,210 --> 00:54:49,294
we should institute proceedings.

1621
00:54:49,294 --> 00:54:50,649
Doesn't matter who filed it.

1622
00:54:50,650 --> 00:54:52,350
If it's meritorious, we should

1623
00:54:52,350 --> 00:54:53,766
we should clean up the registration.

1624
00:54:53,770 --> 00:54:54,356
Absolutely.

1625
00:54:54,356 --> 00:54:57,286
OK, so if a petitioner

1626
00:54:59,990 --> 00:55:03,824
files, but a different person

1627
00:55:03,824 --> 00:55:06,380
is asking for suspension

1628
00:55:06,380 --> 00:55:08,652
within within examination, right.

1629
00:55:08,652 --> 00:55:10,924
Because the the relevant

1630
00:55:10,924 --> 00:55:13,862
registration is at issue, then yeah,

1631
00:55:13,862 --> 00:55:16,958
that seems. Is that right, Bob?

1632
00:55:16,960 --> 00:55:18,157
We might have to take that back,

1633
00:55:18,160 --> 00:55:19,480
but I think that's right.

1634
00:55:19,480 --> 00:55:21,965
-Yeah, it, I, I get that I.

1635
00:55:21,970 --> 00:55:23,346
My understanding the question

1636
00:55:23,346 --> 00:55:25,066
is: the petitioner has filed

1637
00:55:25,066 --> 00:55:26,690
against a registration. And that

1638
00:55:26,690 --> 00:55:28,540
registration is also cited against

1639
00:55:28,540 --> 00:55:29,650
the petitioner's application.

1640
00:55:29,650 --> 00:55:31,890
So the petitioner wants us to decide

1641
00:55:31,890 --> 00:55:33,917
the petition before proceeding with the

1642
00:55:33,917 --> 00:55:36,664
application where there was a 2(d). I yeah,

1643
00:55:36,664 --> 00:55:39,198
I don't think we've talked about that,

1644
00:55:39,200 --> 00:55:41,475
but that seems like normal

1645
00:55:41,475 --> 00:55:42,385
suspension procedure.

1646
00:55:42,390 --> 00:55:44,315
Yeah, I mean, I don't think there's

1647
00:55:44,315 --> 00:55:47,680
anything improper there. -Right. OK.

1648
00:55:47,680 --> 00:55:49,680
Is there a limit to how often and

1649
00:55:49,680 --> 00:55:51,696
how many times you can be filed?

1650
00:55:51,700 --> 00:55:55,710
I just answered that. Alright.

1651
00:55:55,710 --> 00:55:57,910
Is that our last question?

1652
00:55:57,910 --> 00:56:00,760
-Alright, let's see.

1653
00:56:00,760 --> 00:56:02,111
Do we want to switch over to

1654
00:56:02,111 --> 00:56:03,433
the new category 'cause not all

1655
00:56:03,433 --> 00:56:04,588
of them have been published.

1656
00:56:04,590 --> 00:56:06,508
It looks like. Yeah, I see that.

1657
00:56:06,510 --> 00:56:07,036
OK, well,

1658
00:56:07,036 --> 00:56:08,614
-Well, we're getting very close to the

1659
00:56:08,614 --> 00:56:10,647
end and we do have to shut it down.

1660
00:56:10,650 --> 00:56:12,288
But there is one question that

1661
00:56:12,288 --> 00:56:14,319
came in and I understand, Amy,

1662
00:56:14,320 --> 00:56:16,192
you might have been thinking about

1663
00:56:16,192 --> 00:56:18,224
addressing it today and it's one we

1664
00:56:18,224 --> 00:56:19,918
can do pretty quickly. And that is

1665
00:56:19,976 --> 00:56:22,125
what sort of an investigation is needed

1666
00:56:22,130 --> 00:56:25,346
if a trademark is a design-only trademark.

1667
00:56:25,350 --> 00:56:26,730
Is there anything like a search

1668
00:56:26,730 --> 00:56:27,650
that might be deficient?

1669
00:56:27,650 --> 00:56:29,904
And what would you be looking for

1670
00:56:29,904 --> 00:56:31,652
in that circumstance? -I would.

1671
00:56:31,652 --> 00:56:33,998
You gotta look for the design.

1672
00:56:34,000 --> 00:56:34,313
Um,

1673
00:56:34,313 --> 00:56:36,504
you can't just look for the registrant

1674
00:56:36,504 --> 00:56:39,178
or the company name of the registrant.

1675
00:56:39,180 --> 00:56:40,776
You have to actually look for

1676
00:56:40,776 --> 00:56:41,574
the mark at issue.

1677
00:56:41,580 --> 00:56:43,692
So to the extent that a

1678
00:56:43,692 --> 00:56:45,100
reverse image search within,

1679
00:56:45,100 --> 00:56:45,814
you know,

1680
00:56:45,814 --> 00:56:48,670
various online sites would be helpful to show

1681
00:56:48,740 --> 00:56:51,337
that you actually did search the design,

1682
00:56:51,340 --> 00:56:53,812
that's kind of kind of necessary

1683
00:56:53,812 --> 00:56:55,929
for instituting a proceeding against

1684
00:56:55,929 --> 00:56:57,497
the design-only mark.

1685
00:56:57,500 --> 00:56:59,159
So just doing a search of the

1686
00:56:59,159 --> 00:57:00,768
applicant's name is, or the registrant's

1687
00:57:00,770 --> 00:57:02,149
name is not going to cut it.

1688
00:57:02,150 --> 00:57:03,782
You actually have to be looking

1689
00:57:03,782 --> 00:57:04,870
for the mark at issue.

1690
00:57:04,870 --> 00:57:07,040
If it's a design-only mark, we

1691
00:57:07,040 --> 00:57:07,970
recognize that's challenging,

1692
00:57:07,970 --> 00:57:10,058
but Google has this great reverse

1693
00:57:10,058 --> 00:57:11,102
image search feature.

1694
00:57:11,110 --> 00:57:15,130
So I would I would urge you to try that.

1695
00:57:15,130 --> 00:57:15,441
-Excellent.

1696
00:57:15,441 --> 00:57:15,752
Alright.

1697
00:57:15,752 --> 00:57:17,307
Well thank you very much.

1698
00:57:17,310 --> 00:57:18,920
I'm sorry that we're going to be

1699
00:57:18,920 --> 00:57:21,220
unable to get to all of your questions today.

1700
00:57:21,220 --> 00:57:22,396
There were there were a lot of

1701
00:57:22,396 --> 00:57:23,579
you who tuned in for this webinar,

1702
00:57:23,580 --> 00:57:25,253
so unfortunately we're not going to be

1703
00:57:25,253 --> 00:57:26,626
able to get to everyone's question,

1704
00:57:26,626 --> 00:57:28,397
but thank you so much for being

1705
00:57:28,397 --> 00:57:30,090
here and thank you so much for

1706
00:57:30,090 --> 00:57:31,014
sending in your questions.

1707
00:57:31,020 --> 00:57:32,820
For those of you who want a replay,

1708
00:57:32,820 --> 00:57:34,360
don't worry, there will be.

1709
00:57:34,360 --> 00:57:35,764
So the recording for this should

1710
00:57:35,764 --> 00:57:37,444
be posted, as I mentioned at the

1711
00:57:37,444 --> 00:57:39,373
beginning of the webinar, it should

1712
00:57:39,373 --> 00:57:40,987
be posted within about three weeks

1713
00:57:40,987 --> 00:57:42,700
from now. And there's lots of great

1714
00:57:42,700 --> 00:57:44,050
information that we have on the

1715
00:57:44,099 --> 00:57:46,330
website, as well, so be sure to check

1716
00:57:46,330 --> 00:57:47,680
out everything that's up there.

1717
00:57:47,680 --> 00:57:49,524
Specifically interested in the

1718
00:57:49,524 --> 00:57:50,907
Trademark Modernization Act?

1719
00:57:50,910 --> 00:57:51,990
Or if there are other things

1720
00:57:51,990 --> 00:57:52,710
that you're interested in,

1721
00:57:52,710 --> 00:57:54,817
we have all sorts of events that

1722
00:57:54,817 --> 00:57:56,519
are always happening at the USPTO.

1723
00:57:56,520 --> 00:57:58,676
I know that we have a Women's

1724
00:57:58,676 --> 00:57:59,292
Entrepreneurship Symposium

1725
00:57:59,292 --> 00:58:00,579
coming up later this week,

1726
00:58:00,580 --> 00:58:02,128
and if you're someone who wants

1727
00:58:02,128 --> 00:58:03,620
to learn more about patents,

1728
00:58:03,620 --> 00:58:05,810
we have lots of patent information.

1729
00:58:05,810 --> 00:58:07,184
There's also one about trade secrets

1730
00:58:07,184 --> 00:58:08,560
I believe coming up next week.

1731
00:58:08,560 --> 00:58:09,250
And of course,

1732
00:58:09,250 --> 00:58:11,130
we also have our Trademark Basics Boot Camp.

1733
00:58:11,130 --> 00:58:13,137
A lot of you on the call today are

1734
00:58:13,137 --> 00:58:15,306
are well advanced beyond the basics,

1735
00:58:15,310 --> 00:58:16,838
but for those of you who might have

1736
00:58:16,838 --> 00:58:18,686
tuned in and might be looking for

1737
00:58:18,686 --> 00:58:19,822
some basic trademark fundamentals,

1738
00:58:19,830 --> 00:58:21,377
be sure to check out our Trademark

1739
00:58:21,377 --> 00:58:22,040
Basics Boot Camp.

1740
00:58:22,040 --> 00:58:23,608
And we also have a similar program

1741
00:58:23,608 --> 00:58:25,450
if you want to learn patent basics.

1742
00:58:25,450 --> 00:58:27,434
It's called the Path to a Patent program,

1743
00:58:27,440 --> 00:58:29,870
and both of those eight week

1744
00:58:29,870 --> 00:58:31,490
courses begin next week.

1745
00:58:31,490 --> 00:58:33,177
So thank you again for being here.

1746
00:58:33,180 --> 00:58:34,445
We appreciate your time and

1747
00:58:34,445 --> 00:58:36,030
we will see you next time.

1748
00:58:36,030 --> 00:58:37,098
Thanks so much and take care.