What the numbers reveal about the Trademark Modernisation Act so far

Unlike patents and copyrights, which are expressly mentioned in the US Constitution (Article I, §8, clause 8), trademark rights are grounded in use. To enjoy the right to exclude others from using a mark, the owner has to actually use it. And to enjoy a federal registration, the owner has to use the mark in commerce.

The Trademark Modernisation Act is designed to provide a more efficient and less expensive tool to rid the federal trademark register of marks for which the use-in-commerce requirement has not been established. In other words, it is designed to ensure an accurate register.

Historically, if individuals or businesses wanted to establish that a registration should be cancelled on the ground of non-use, they had to rely on traditional contested cancellation proceedings before the TTAB. However, now that the act has come into force they can file petitions for ex parte expungement or re-examination proceedings.

Expungement is reserved for a registration of a mark that has never been used in commerce on or in connection with some or all of the goods or services recited. Re-examination is reserved for a registration for a mark that was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date. To initiate either proceeding, a petition must:

  • identify the registration that is the subject of the petition;
  • identify each good or service recited in the registration for which it is alleged that the mark has never been used in commerce;
  • include a verified statement that sets out the elements of the reasonable investigation that the petitioner conducted to determine that the mark has never been used in commerce on or in connection with the goods and services identified in the petition, and any additional facts that support the allegation that the mark has never been used in commerce on or in connection with the identified goods and services;
  • include any supporting evidence on which the petitioner relies; and
  • be accompanied by the fee prescribed by the director.

Section 2.91(d)(2) provides a non-exhaustive list of appropriate sources of evidence and information to support a reasonable investigation. This includes the following:

  • state and federal trademark records;
  • websites and other media likely to or believed to be owned or controlled by the registrant;
  • websites, other online media and publications where the relevant goods or services likely would be advertised or offered for sale; and
  • print sources and web pages likely to contain reviews or discussions of the relevant goods or services.

How is the Trademark Modernisation Act being used?

As of 25 February 2022, 46 petitions have been filed under the act. Twenty-six of these are for expungement, with the remaining 20 for re-examination. The majority of petitions relate to unique marks but some appear to attack a family of marks.

For individual marks, what jumps out at first glance is the re-examination proceeding initiated for the mark $COIN, which is the ticker symbol for Coinbase Global, Inc., a popular cryptocurrency exchange. For attacks on families of marks, five petitions for expungement have been filed against marks with a formative APEX term: APEX ARRIVA, APEX MOZART, APEX NEMO, APEX RED HOT BURNING and APEX WONDERLAND.

Why are there more expungements than re-examinations? Well, a petitioner may request an ex parte expungement proceeding in connection with a registration at any time between three and 10 years after the date of registration. However, until 27 December 2023 a petitioner may request an expungement proceeding for a registration that is at least three years old, regardless of the 10-year limit (37 CFR §2.91(b)(1)). Because of this limited window of opportunity to challenge marks that predate the 10-year limit on expungements, the number of expungement petitions should exceed the reexaminations – and this is consistent with the data so far.

The following table depicts the petitions filed as of 25 February 2022.

Registration number

Trademark

Type of petition

Filing date

4623139

LIV

Expungement

2/25/2022

5484079

SOLOPLAY

Expungement

2/25/2022

5527146

Misc design

Expungement

2/16/2022

5023638

ZAKI & design

Expungement

2/15/2022

5023639

ZAKI

Expungement

2/15/2022

5646212

STRATOSPHERE

Expungement

2/10/2022

4990946

Misc design

Expungement

1/28/2022

5095010

AIMTECH

Expungement

1/26/2022

5420324

APEX ARRIVA

Expungement

1/25/2022

5430366

APEX MOZART

Expungement

1/25/2022

5420325

APEX NEMO

Expungement

1/25/2022

5430355

APEX RED HOT BURNING

Expungement

1/25/2022

5477544

APEX WONDERLAND

Expungement

1/25/2022

5463408

WORLD FAMOUS SALMON TACKLE SALMON SNATCHER GET HOOKED UP

Expungement

1/24/2022

4915973

BIBI

Expungement

1/20/2022

5510300

HEIKA

Expungement

1/19/2022

5043246

WOW NO COW!

Expungement

1/18/2022

5599372

VSMASH

Expungement

1/18/2022

5322572

RAZ MOBILITY

Expungement

1/14/2022

5239764

SURFSTAR WAKE & Design

Expungement

1/13/2022

2822910

SPECIAL FORCES

Expungement

1/3/2022

1974677

A BORDERLESS COMPANY FOR A BORDERLESS WORLD

Expungement

12/31/2021

5461849

AP ANIPROTEIN - PROTEÍNA ANIMAL

Expungement

12/28/2021

5435359

RUBINS

Expungement

12/23/2021

5605675

SELLABLE

Expungement

12/23/2021

5513424

GALAVAVA

Expungement

12/21/2021

6592598

LIV

Reexamination

2/25/2022

5690879

JOVIKIDS

Reexamination

2/24/2022

5874588

BLAK MARK-IT

Reexamination

2/21/2022

5248925

GOLO SUPERFUEL

Reexamination

2/19/2022

6072800

FRESH BROS

Reexamination

2/16/2022

5711654

WISELY WITH ADP

Reexamination

2/10/2022

5957659

MYWISELY

Reexamination

2/10/2022

6486443

GOLO

Reexamination

2/9/2022

6363739

EVERLOM

Reexamination

2/8/2022

3960339

HUXLEY THE DYSTOPIA

Reexamination

2/1/2022

6240800

STASH HAUS

Reexamination

1/25/2022

6372057

OYU

Reexamination

1/24/2022

6214676

$COIN

Reexamination

1/20/2022

6327588

WOOTECHY

Reexamination

1/11/2022

6159781

IWHIN

Reexamination

1/4/2022

5186403

THE COOP

Reexamination

1/3/2022

6206318

WISELYWIRE GLOBAL MONEY TRANSFER

Reexamination

1/3/2022

5939922

WATERBIRD

Reexamination

12/31/2021

5940037

WATERBIRD & Design

Reexamination

12/31/2021

6140514

WATERBIRD & Design

Reexamination

12/31/2021

The Trademark Modernisation Act is still in its infancy. Time will tell how many of these proceedings successfully lead to the trademark office cancelling the registration. It also remains to be seen how long individuals and businesses will have to wait before seeing a decision.


This is an insight article whose content has not been commissioned or written by the WTR editorial team, but which has been proofed and edited to run in accordance with the WTR style guide.

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