In a continuing effort to maintain an accurate U.S. Trademark Register by eliminating registrations for marks that are not in use, the USPTO is in the process of establishing a new method of challenging registrations based on non-use. The concept is a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the TTAB.  In this method, the only possible grounds for cancellation will be (1) abandonment as to some or all of the goods/services (nonuse plus intention not to resume use); or (2) non use for some or all of the goods/services at the time the declaration of use in commerce was filed (application date for a 1a application, or the Statement of Use for a 1b application).  This new process is intended to be quicker and more cost effective for the Petitioner.  Below are some of the highlights of this proposed method:

  1. The cost to file a petition to cancel in a Streamlined Proceed will be $300 per class if filed electronically, and $400 per class if filed by paper.
  2.  The petition must set forth the facts to establish the petitioner’s standing and set forth in detail the factual basis for the ground(s) asserted as the basis for cancellation. 
  3.  Proof of abandonment and/or nonuse of the mark must be submitted with the petition to cancel.
    1. This could be done by the inclusion of a declaration detailing the petitioner’s search for use of the mark and the results, or other evidence of nonuse.
  4.  The respondent’s answer must include proof of use or other evidence upon which the respondent seeks to rely.
  5.  The petitioner may elect to file a notice of conversion to a full cancellation proceeding after the respondent’s answer is submitted.  However, the respondent would not have the option to convert to a full cancellation proceeding.
  6. Counterclaims will not be permitted.
  7. Upon request by the petitioner or respondent, limited discovery may be granted.
  8. Only one extension of time for the answer or reply would be allowed.
  9. Oral hearings will not be permitted.
  10. The entire process could be finished in only seventy days (default judgment) or one hundred seventy days (if respondent elects to respond).

Additional Info

  • The full notice from the Patent and Trademark Office is available here.  Any comments must submitted by August 14, 2017.

Post by Nick Gingo and Elissa Orsine