New Ways to Cancel Unused Registered Trademarks
Regulations implementing the Trademark Modernization Act of 2020 (TMA) will go into effect on December 18, 2021. Individuals, businesses, and the United States Patent and Trademark Office (USPTO) will now have new tools to clear away unused registered trademarks from the federal trademark register and the USPTO will have the ability to move applications through the registration process more efficiently.
The first tool is a new expungement proceeding, where any party may request cancellation of a registration because the registrant never used the trademark in commerce with those goods or services. An expungement proceeding may be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old.
The second tools is a reexamination proceeding, where any party may request cancellation of a use-based registration on the basis that the trademark was not in use in commerce on or before a particular relevant date. For a registration based on a use application, the relevant date is the filing date of the application. For a registration based on an intent-to-use application, the relevant date is the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired, whichever is later.
These are powerful new tools that every trademark registrant should be aware. As the saying goes, "use it or lose it".