USPTO Issues Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020
Monday, December 27, 2021, is opening day for the new USPTO ex parte expungement and reexamination procedures. The Director of the USPTO is expected to throw out the ceremonial first brief and holler "play ball!" Meanwhile the Office has issued "Examination Guide 1-21: Expungement and Reexamination Proceedings Under the Trademark Modernization Act of 2020." [pdf here]. The Office has also made available a new TEAS form called "Petition for Expungement or Reexamination."
Establishing a prima facie case of nonuse may be not be easy. Proving a negative never is. Be sure to read the Board's decision in TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 USPQ2d 1786 (TTAB 2018) [TTABlogged here], involving an "expedited cancellation" proceeding in which the Petitioner TV Azteca failed to establish a prima facie case of abandonment based on its pleaded claim of nonuse during the three-year period immediately preceding the filing of the petition to cancel.
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Text Copyright John L. Welch 2021.
posted by John L. Welch @ 12/23/2021
2 comments
2 Comments:
Leo Stoler is spinning the wheels in his brain, if still alive. There are hundreds perhaps thousands of registrations containing everything in each International Class: e.g., dog food and cut flowers in International Class 31. Research for non-use would not require extensive research. Start with merely asking the company where you can buy the products/services in the US in writing or phone call..
Most of the these types of registrations will have been filed by large EU countries as the EUy permits this practice and is represented by the most expensive US IP firms. So if you pay $400 per Class, what can you count on to settle the matter.
Obviously, you threaten the company first before filing an expungement action? What do you think??
This case is really very enlightening for Taiwanese trademark law parctice. I just published a brief article introducing it to Taiwanese readers.
http://www.naipo.com/Portals/1/web_tw/Knowledge_Center/Trademark/IPNC_221221_1902.htm
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