It’s About To Be Easier To Challenge Trademarks – Domain Name Wire
New rules should help clean up bad brands.
There are many questionable trademarks. Sometimes a business rigs the dates of first use. Other times, they submit specimens of questionable use. And on occasion, people register fraudulent marks. I’ve written about questionable brand requests and people using brands to manage new top level domains.
Thanks to the Trademark Modernization Act of 2020, it is about to be easier to challenge granted marks.
The United States Patent and Trademark Office summarizes the issue addressed by the law:
In order to have a well-functioning trademark system, the trademark registry must accurately reflect the trademarks currently in use… When the registry includes trademarks that are not currently in use, it is more difficult for legitimate businesses to erase and to register their own trademarks. Identifier. It has become apparent in recent years that registrations are obtained and maintained for trademarks which are not properly used in commerce... In addition, this “congestion” has concrete consequences when the availability of brands is exhausted …
The House report also noted that “[a] The recent increase in fraudulent trademark applications has put a strain on the accuracy of the federal register. Although trademark applications go through a review process, some of these forms of fraud are difficult to detect in individual applications (although patterns of fraud can be observed in multiple applications), leading to registrations. illegitimate. While the USPTO may try to develop better systems to detect fraud during the review process, its power to reconsider post-registration applications is currently limited.
There will now be two mechanisms for contesting trademarks which should be easier and less expensive than current challenges. The USPTO summarizes them in the publication of final regulations:
The two new ex parte procedures created by the TMA, one for expungement and the other for reconsideration, provide for new mechanisms to remove a registered trademark from the trademark register or cancel the registration of certain products and / or services. , when the declarant has not used the mark in trade by the relevant date required by law. In expungement proceedings, the USPTO must determine whether the evidence on the record supports a conclusion that the registered mark has never been used in commerce on or in connection with some or all of the goods and / or services mentioned in the registration. In a review proceeding, the USPTO must determine whether the evidence on the record supports a conclusion that the mark registered under section 1 of the Act was not used in commerce on or in connection with some or all of the products and / or services on the date of filing of the application or of the modification alleging use, or before the deadline for filing a declaration of use, as the case may be. If the USPTO determines that the required use was not made for the goods or services at issue in the proceeding and that determination is not overturned on review, the registration will be revoked in whole or in part. , depending on the case.
These simpler mechanisms could help reduce bad faith UDRP filings. A domain name owner now has an easier way to challenge a mark used as the basis for a UDRP, which can give complainants a break before filing a complaint with a potentially challenged mark.