The U.S. Patent and Trademark (USPTO) Office identified through random audits that more than half of active registrations include some goods and services where a registered mark is not being used. The Trademark Trial and Appeal Board (TTAB) is piloting a new program to expedite cancellation proceedings in the hope of increasing the effectiveness and accuracy of the Trademark Register. This is part of a larger effort of the USPTO to ensure the integrity and accuracy of the Trademark Register.
What to Know
- This program may be worth considering if your cancellation proceeding is targeted at abandonment or nonuse of the registered mark.
- Existing TTAB Accelerated Case Resolution (ACR) procedures are utilized used in this program, wherein:
- The plaintiff’s initial submission must include its evidence and brief
- The defendant’s response must include its evidence and brief
- The plaintiff must have had a reply opportunity
- This program will measure:
- Frequency of parties’ willingness to agree to ACR
- Concerns expressed
- Types of measured preferred
- Effectiveness of those measures
- Progress and timeliness of ACR pilot cases
- Rates of default judgement for abandonment and nonuse claims
- Withdrawals and settlements
How to Act
Discuss with your Fennemore Craig attorneys whether or not you’d benefit from an expedited cancellation proceeding. The desirability of participating in this new program and using ACR will vary depending upon the situation.
Cases to Reference
- Not all petitions will be suitable for an expedited proceeding. The USPTO has identified that the following cases represent scenarios are not ideal for the pilot program
- Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043 (TTAB 2017) (Cancellation No. 92057132) and
- Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175 (TTAB 2017) (Opposition No. 91212312).