28 Jan US trade mark law changes – what to expect in 2022 from across the pond
In this article, the expert trade mark team at Serjeants explains the recent US trade mark law changes and the impact they could have on brand owners.
The concept of ‘use’
The US trade mark law is governed by the Lanham Act, which allows protection for both registered and unregistered trade marks on the basis of ‘use’. Common law trade mark rights are acquired automatically when a business uses a name or logo in commerce. These rights are enforceable in state courts.
Typically, there are two types of filing bases for US trade mark applications filed to register a mark:
- Actual ‘use’ in commerce
- ‘Bona fide intent to use’ – importantly, the mark will not be registered until proof of use is provided to the USPTO)
The concept of ‘use’ is a major part of US trade mark law. As such there has been a lot of emphasis surrounding this concept.
In the past, the deadlines for a trade mark owner to prove ‘use’ of their trademark would typically be around the 5th or 6th year of obtaining registration. However, the new Trade Mark Modernisation Act (TMA) of 2020 is set to change this.
Essentially, the purpose of the TMA is for the removal of dead trade mark registrations from the register. The elimination of irrelevant marks will allow faster processing times for new trade mark applications and make searching the US register for prior marks a lot easier.
There are two ways in which the elimination process can be implemented:
Expungement proceedings will determine if a registered trade mark has never been used in US commerce. This could result in the cancellation of some or all the goods or services within that registration. Expungement proceedings can be filed against any trade mark between three and 10 years since it obtained registration, with no limit as to the number of proceedings brought to the PTO.
Re-examination proceedings will assess whether a trade mark registered in a ‘use-based’ application was in fact not in use on the date the application was filed, or as of the filing date of statement of use.
Any person may submit a petition to the director of the PTO for such proceedings against a trade mark registration, without disclosing their identity.
So, what does this mean for brand owners?
It is imperative that owners of trade marks keep clear, up-to-date records to prove ‘use’ of their trade marks for all of the listed goods and services in which they have obtained protection.
Now that the TMA has been implemented, owners of any marks based on non-US registrations should note that the provision of ‘use’ in US commerce may be required within 3 years of the trade mark obtaining registration, should expungement be sought by a third party. This therefore makes some trade mark registrations vulnerable to attack, sooner than anticipated.
If no proceedings are brought then the usual 5-year declaration of use must be submitted at the USPTO.
Key points to take away
Expungement will now be grounds for parties to request the cancellation of a trademark. In order to bring cancellation proceedings on the grounds of expungement, it must be proved that the registered trade mark has never been used in commerce. Parties can now request cancellation of a trade mark at the Trademark Trial and Appeal Board (TTAB) on the new ground of expungement after the first three years from the registration date.