Monday, May 22, 2017

USPTO Seeks Comments on Possible New Streamlined Cancellation Procedure

The USPTO is requesting comments on a possible new streamlined version of a trademark cancellation proceeding designed to enable a third-party to more efficiently challenge a registration based on abandonment or nonuse. See the Federal Register Notice here.


The United States Patent and Trademark Office (“USPTO”) seeks comments from stakeholders, mark owners, and all those interested in the maintenance of an accurate U.S. Trademark Register, on the establishment of a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the USPTO's Trademark Trial and Appeal Board (“TTAB”).


To ensure consideration, comments should be submitted no later than August 14, 2017.

Read comments and post your comment here.

Text Copyright John L. Welch 2017.


At 9:41 AM, Anonymous Anonymous said...

Under the proposed rules, it appears BOTH parties have a burden of production. That is, “the petition would be required to be supported by the proof upon which the petitioner relies to establish both standing and the claim of abandonment and/or nonuse,” and “the answer would be required to also include proof of use or other evidence on which the respondent seeks to rely to counter the abandonment or nonuse grounds for the goods or services as to which the grounds have been alleged.”

I assume the burden of persuasion will remain with petitioner, per Cold War Museum, and thus that if neither party submits any evidence, the petition will fail. Maybe the regulations should clarify that point?

At 5:20 AM, Anonymous Anonymous said...

Unless the PTO properly staffs this initiative, it will be no quicker than a petition to cancel at the Board. At the multiple "listening tours" held on this issue it was abundantly clear that the Office has no idea how it would staff review of these proceedings. There are a handful of attorneys in petitions currently who can't, it seems, keep up with the other petitions in their purvey.

At 9:39 AM, Anonymous Allison Ricketts said...

This proposal is for proceedings to be handled by the Board, not by petitions staff in the Commissioner's Office.


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