The Trademark Modernization Act One Year On: New Tools and Takeaways

In summary

This chapter discusses petitions filed under the Trademark Modernization Act after its first year of enactment.

Discussion points

• Background of the Trademark Modernization Act
• Current filing numbers under the new legislation
• A review of current petitions and their evidentiary support
• Strategic concerns for practitioners when filing petitions under the Trademark Modernization Act

Referenced in this article

• The United States Patent and Trademark Office
• Trademark Modernization Act

The Trademark Modernization Act (TMA), which came into effect on 18 December 2021, provides parties and the United States Patent and Trademark Office (USPTO) with new tools to clear registrations for marks that are not in use from the Federal Register. The TMA implemented two new mechanisms for the expedited cancellation of trademark registrations – ex parte re-examination and ex parte expungement. Re-examination challenges a registration on the ground that the mark was not in use at the time of the application’s filing date or the filing date of the amendment to allege use. Expungement challenges a registration on the ground that the mark has never been used in commerce in connection with some or all of the goods or services identified in the registration. The new proceedings may be filed by any party: it is not necessary to prove standing. If the party seeking cancellation is doing so because the registration is blocking a pending application, prosecution of that application is suspended during the pendency of the TMA proceedings.

A party seeking cancellation bears the burden of establishing a prima facie case of non-use of the mark. Each petition must establish non-use via the evidence submitted at the time the petition is filed. This is a difficult task, as it requires a negative to be proved. Petitioners must demonstrate that they have made a bona fide attempt to establish that the mark has not been used, or has ceased use in commerce, and include a verified statement that the petitioner conducted a reasonable investigation. The Director of the USPTO evaluates the evidence submitted with the petition and determines whether a prima facie case has been made. If so, the USPTO institutes an office action to the registrant, to which the registrant has three months to respond.

The rules established by the USPTO when the TMA came into effect provided little guidance on what constitutes prima facie evidence. Our review of the proceedings indicates that, in general, a petitioner’s chances of institution improve the more evidence and wider variety of evidence they provide. For instance, if a mark covers high-end clothing, searching a variety of websites that sell high-end clothing is recommended. Additionally, conducting a search on Google as well as on relevant social media platforms helps to demonstrate that the petitioner conducted a widespread, reasonable search. However, although a review of the past year’s proceedings provides would-be petitioners with some understanding of how to successfully demonstrate prima facie evidence of non-use of a mark, there is still little guidance overall as to the minimum threshold of proof required. It does not appear that obtaining the services of a private investigator is necessary. It is worth keeping in mind that obtaining sufficient evidence can be time-consuming, as petitioners need to be thorough and keep detailed documentation of their searches.

Numbers to date

As part of the TMA’s new procedures, the USPTO implemented a new tool on its website that allows users to monitor ongoing petitions for expungement and re-examination.^[1] It offers those interested in filing a petition a helpful starting point. Additionally, parties can utilise the tool to see whether third parties or the director have already taken action against unused marks. As at April 2023, 818 petitions have been filed – 401 expungements and 417 re-examinations, including 80 that were instituted by the USPTO itself.

A review of recent petitions suggests it takes three to four months for the USPTO to initially address a filed petition, by instituting it, sending an enquiry letter to the petitioner or rejecting it. Once a petition is instituted, the registrant has three months to respond, with the option of a three-month extension for a fee. If no response is filed, the petition will end in default. After the deadline for a registrant to respond has passed, the USPTO is currently taking between one and two months to render a decision. It is important to keep this timing in mind as it may be a factor as to whether one wants to use the TMA procedures or instead use a traditional petition to cancel through the Trademark Trial and Appeal Board, which has a 40-day response time.

This article briefly reviews five recent petitions and provides an analysis of the supporting evidence submitted.

Successful expungement petitions

Expungement granted and registration terminated in part

The petitioner filed a partial expungement proceeding against the mark COSY LIFE (Registration No. 5475197) that was limited to seeking cancellation of the mark in connection with ‘kennels for household pets’ in Class 20, only one of several categories of goods in the registration. According to the petition, the registrant was using the mark in connection with (1) a back stretcher device, (2) a neck and head hammock, (3) a neck stretcher and (4) a star projector night light, but not with kennels, as claimed in the registration. The petitioner provided a detailed narrative of the investigation it conducted to demonstrate its prima facie case, along with a variety of evidence:

• an overview of the registrant’s application containing the specimen of use;
• an overview of the registrant’s website as its main channel of sales, including its About Us page, displaying the use of the mark on neck pain relief apparatus;
• a review of the registrant’s online Amazon.com storefront selling various goods under the COSY LIFE mark, none of which were ‘kennels for household pets’;
• a review of the Wayback Machine to show the lack of evidence that the registrant had ever sold any pet products; and
• a demonstration of the thorough online search the petitioner performed as part of its reasonable investigation.

The USPTO accepted the petition and issued a non-final office action. The registrant did not respond with any evidence of use and the registration was terminated in part as to the kennels.^[2]

Here, the petitioner focused on non-use of a particular class of goods, only seeking partial cancellation. The evidence provided showed that the registrant was actually using the mark in connection with neck-pain relief products but not kennels. Although a general internet search alone will not necessarily show prima facie evidence of non-use, highlighting a lack of the product on the registrant’s own platforms and channels of sale, both now and in the past, may be sufficient.

Expungement granted and whole registration terminated

In a petition against the registration for HYDROMOMS and Design (Registration No. 5587254), for use in connection with beverages, the petitioner successfully cancelled the entire registration.^[3] The petitioner supported its petition by submitting the original specimen of use showing that the registrant had shipped the products with a sticker of the mark covering the original Indonesian mark.

To further support the claim of non-use, the petitioner submitted the results of an internet search for the registrant’s name and mark, which did not return any hits showing the mark used in connection with beverages, but which instead showed only hydration products not connected to the registrant. Additionally, the petitioner provided searches of the registrant’s website, social media pages, the registrant’s parent company and Amazon, none of which displayed use of the HYDROMOMS mark for the claimed products.^[4]

The USPTO accepted the petitioner’s filing as evidence of a prima facie case and issued a notice to the registrant requesting a response. When no response was received, the USPTO issued a notice of termination, cancelling the entire registration.

Registration voluntarily relinquished

The USPTO accepted a petition filed for cancellation of POET TREE (Registration No. 3919224) and instituted a proceeding. The petitioner provided extensive evidence demonstrating lack of use, including screenshots of the results of various searches via search engines that returned no evidence of use, results of searches of a variety of websites that would typically sell the relevant goods, and searches of local news sites and articles. The petitioner also provided information about the domain name previously used by the registrant, including submitting evidence that the domain associated with the registrant was expired per the associated WHOIS. The registrant responded to the notice by voluntarily surrendering the mark for cancellation.^[5]

Proceeding terminated because registrant demonstrated use

On 31 December 2021, a petitioner instituted a re-examination proceeding for the mark WATERBIRD (Registration No. 5939922), registered for ‘distilled spirits; prepared alcoholic cocktail’ in Class 33. The USPTO accepted the petition as having met the prima facie evidence threshold. The registrant responded by providing evidence of use of the WATERBIRD mark in commerce that was sufficient to prevent cancellation. To demonstrate that the mark was in use, the registrant submitted the following evidence:

• a declaration of a customer discussing its purchase of a product containing the WATERBIRD mark and a picture of the product;
• federal certificates of label approval for several of the WATERBIRD beverages, namely its Moscow Mule product, its Vodka Soda & Lime product and its Potato Vodka product;
• dated and time-stamped photos of the product on shelves at a Kroger grocery store;
• a label of one of the beverages; and
• a declaration from the founder.

The USPTO determined that the mark had been used in commerce and terminated the re-examination proceeding.^[6]

The WATERBIRD proceeding is unusual because the registrant responded to the petition. In reviewing the re-examination proceedings to date, we notice that, more often than not, registrants do not respond to petitions after institution, and the subject registration is cancelled by default.^[7] Therefore, the WATERBIRD proceeding provides registrants with helpful guidance about the evidence that the USPTO will find sufficient to overcome a petition. Here, the registration was relatively new and the mark had been in use only since 2019, barely two years prior to the institution of the re-examination procedure. Although use of the mark may have not been extensive as of yet, the registrant was still able to demonstrate sufficient use to the USPTO to effectively fend off cancellation.

Director-initiated proceeding following termination of petition

In some cases, a third-party petition may be denied because the evidence does not support a finding of a prima facie case of non-use. Nonetheless, the USPTO Director may further look into the registration and elect to initiate a proceeding. For example, a petition for expungement was filed against the mark NUTRIUM (Registration No. 5527589) for use in connection with computer hardware and software as well as a wide variety of other goods and services. The petitioner stated that it conducted a reasonable investigation and found no evidence that the mark was ever used in commerce in connection with the registered goods. The petitioner’s investigation included research conducted on LexisNexis to demonstrate that the company had not ever operated within the United States. The petitioner also provided a screenshot of the UK Companies House web page showing that the registrant dissolved in 2020. The petitioner also asserted in the petition that it reviewed the registrant’s social media websites and conducted a broad internet search of the mark as part of conducting a reasonable investigation.^[8]

Despite this range of evidence, the USPTO refused to institute a proceeding on the grounds that the petition failed to establish a prima facie case. However, shortly after the petition was denied, the USPTO initiated its own expungement proceeding. The notice of institution/non-final action outlined how the USPTO performed a search that established a prima facie case, highlighting what the original petitioner failed to present. The USPTO developed a list of several websites on which the types of goods and services associated with the registration would typically be sold, then conducted a thorough search of these sites (which returned no hits for the products and services) and documented those results through extensive screen captures of the results. Additionally, the USPTO utilised the Wayback Machine to search for terms associated with the registration and relative domain names, which again returned no evidence of use.^[9]

As a practical measure, this proceeding provides an indication of the websites that the USPTO considers are of the type on which the goods and services listed in the registration are traditionally sold, and indicates that not finding the mark there, and documenting that lack of evidence, can constitute a prima facie case.

Takeaways for future petitioners

Filing one of the new TMA proceedings is an effective strategy that parties can incorporate into their enforcement and policing plans. There is no limit on the number of petitions that can be filed by the same petitioner or against the same registration, although co-pending filings are not permitted. The USPTO Director’s determinations as to whether to institute a proceeding are final and non-reviewable. Additionally, the TMA’s estoppel provisions prevent the institution of later proceedings against the goods and services in a registration that have been the subject of a previous proceeding where acceptable proof of use was provided by the registrant. Petitioners should also keep in mind that they only get one chance per petition – no supplementation is allowed after filing. Therefore, a petition must set forth its best and most complete set of evidence at the time it is filed.

So far, the USPTO has not provided much guidance as to why a petitioner fails to establish a prima facie case in a particular petition. Most determinations do not comment on evidentiary deficiencies. However, the USPTO does provide some tips and best practices on its website.^[10] The USPTO indicates that it is important to present a narrative in the petition, and that the narrative should include the reasonable investigation strategy, a variety of sources of evidence, industry-specific evidence and extensive documentation. For example, when searching different e-commerce websites, such as Target or Amazon, it is crucial to compile screenshots of the results returned by the searches conducted to demonstrate the lack of use. Along those lines, search results from one type of source may not be sufficient, but the reasoning for choosing particular sources versus others should be explicitly laid out in the petition.

Sources of evidence matter. Petitioners should consider the goods or services used in connection with the mark, the period for which it was registered and the market the registrant is targeting when gathering evidence. This will help petitioners to develop a strategy as to which websites to search and what other sources they may want to consult. Social media accounts are also useful evidence, since one would expect a registrant to use its own marks on its own social media accounts. Petitioners should also consider consulting internet archives such as the Wayback Machine (at Archive.org).

Petitioners considering filing multiple petitions against related registrations with similar supporting evidence should consider commencing with one petition to determine whether the evidence suffices. This strategy may help the petitioner to determine whether evidence is lacking so that they can amend and supplement subsequent petitions accordingly.

Even if a petition is denied, the USPTO Director may institute its own proceeding.^[11]

Conclusion

The TMA provides brands and practitioners with a potentially speedier option for pursuing the cancellation of a registration that is not being used in US commerce. Though these proceedings may be quicker than a full traditional non-use cancellation proceeding, they take a minimum of six months, compared to a minimum approximate time of four months for traditional cancellations that end in default. In addition, practitioners still need to be thorough and thoughtful as they conduct a reasonable investigation to compile evidence in support of their petition. The cost and time needed to compile thorough evidence may cut against these new proceedings, however, as they still require the USPTO’s approval to institute. Practitioners will need to weigh the cost and benefits of a streamlined petition and the overall lack of guidance as to what constitutes prima facie evidence against the better-known process of a petition to cancel, which does not require the USPTO’s approval to institute.

Footnotes