The Trademark Modernization Act- Takeaways
The Trademark Modernization Act- Takeaways
The USPTO implemented the Trademark Modernization Act in December of 2021. The act provides a tool for individuals and businesses to clear away unused registered trademarks from the federal trademark register.
The act provides two new mechanisms for expedited cancellation of Federal Trademark Registrations. The party seeking cancellation must provide evidence of non-use of the mark in question. This can be challenging as developing evidence of the negative/non-use is always more challenging.
Numbers to date…
As of April 2023, there have been 818 petitions filed. There have been 401 expungements and 417 re-examination requests filed.
The process is taking three to four months for the USPTO to address the petitions and the process thereafter can take an additional two months for them to render a decision. The wait time for cancellation due to non-response is 40 days.
Takeaways…
The USPTO has not provided much in the way of guidance on why a petitioner’s requests have failed. However, the USPTO does state that petitioners must demonstrate that they made a bona fide attempt to establish that the mark has not been used in commerce or use has ceased. A verified statement that the petitioner conducted a REASONABLE investigation is required.
The USPTO provides some tips and best practices on its website
READ MORE CHECK OUT THIS ARTICLE FROM THE WORLD TRADEMARK REVIEW