Trademark Modernization Act is here!!
Big news in trademark land! The trademark Modernization Act went into effect over the weekend. This morning, I filed my first expungement procedure on behalf of a client. Under the TMA, any third party can request either expungement of a registered trademark or re-examination of an application in progress that has been approved by an Examining Attorney at the USPTO.
In this case, my client was interested in a particular mark, we searched the Patent and Trademark Office records, which revealed another registration for the same mark. However, it's one of those "blockbuster" applications where you see TONS of goods and services listed. Our research did not show any actual use of the mark. So, we initiated the expungement. It basically is a request that the Patent and Trademark Office, take another look at the registration that was issued and consider removing it from the register of trademarks. We needed to submit evidence that the mark was not in use. Usually, a Google search is not enough, but in this case, we submitted multiple sources, showing that the mark is likely not used in connection with the services, and probably never was.
There is a $400 filing fee per class of goods and services.
This procedure is not the cheapest way to take action. If you are budget-constrained, you're better off actively monitoring your trademark, sending a cease and desist letter, and filing a letter of protest when you can, there's only a $50 filing fee for that. But, this should achieve the same goals as a cancellation procedure. However, a petition for cancellation has a higher filing fee. And it's really like mini litigation with a lot of steps along the way, so costs can quickly escalate. I'm excited to see how the expungement procedure works.