The United States Patent & Trademark Office (“USPTO”) has continued its efforts to rid the Trademark Register of marks that are not in use. This would include marks that have been abandoned or were not in use as of the filing date of the trademark application, or at the time of the filing of the Statement of Use or Allegation of Use (“non-use”). The USPTO has proposed streamlining the procedures that eliminate registrations not in use, by creating an expedited cancellation procedure that could be initiated at the Trademark Trial and Appeal Board (“TTAB” or the “Board”).
The streamlined cancellation proceeding would require that the party initiating the procedure have proof of standing and abandonment or non-use. The USPTO intends to reduce the fee to file this expedited cancellation proceeding. This streamlined process will limit discovery, eliminate hearings before the TTAB, and shorten the trial schedule. The Board intends to issue decisions in an expedited time frame as well. If there is a default judgment, the proceedings could be completed in as little time as 70 days. While the full-blown streamlined process could take approximately 170 days.
The USPTO has reached out to the intellectual property community for feedback and comments. There appears to be support for this proposed streamlined cancellation procedure. This process could certainly benefit parties that have evidence that a mark is not in use, and yet do not have a limitless budget to accommodate the high costs of inordinately lengthy cancellation proceedings. In addition, it will address depletion of marks, and aim to improve the congestion of the Trademark Register. There were comments indicating concern that the response time of 40 days may be too short, since the respondent would have to produce evidence of use on the list of goods and services identified in the registration. The balance here will require ensuring that the proposed procedure remain expedited compared to the current cancellation proceeding, while still ensuring the respondent receives due process and a fair opportunity to respond to the allegations.