My last blog post discussed two changes to the U.S. trademark prosecution process that were contained within the recently enacted Consolidated Appropriations Act, 2021 (CAA). This blog will discuss two new types of administrative proceedings that were created by the CAA.
Both types of proceedings are “ex parte proceedings,” so that a single party can initiate the proceedings to minimize costs. The Director of the U.S. Patent and Trademark Office can also initiate these types of proceedings.
The first type of administrative proceeding is an expungement proceeding. This type of proceeding provides an expedited means to cancel trademark registrations that have not been used in commerce. These proceedings can be initiated after a mark has been registered for three years, but they must also be initiated before the mark has been registered for 10 years.
The 10-year limit will not apply until Dec. 27, 2024, so that any mark that has been registered for more than three years at that time will be eligible for expungement.
The second type of administrative proceeding is a reexamination proceeding. This type of proceeding can be initiated when a party alleges that a mark was not being used at the time of the filing of the original application and when the application is based on actual use.
When the application is an intent-to-use application, a party must allege that the mark was not being used at the time of the filing of an allegation of use to initiate a reexamination proceeding.
Reexamination proceedings must be initiated within the first five years after a mark is registered.