82 FR 22517 - Improving the Accuracy of the Trademark Register: Request for Comments on Possible Streamlined Version of Cancellation Proceedings on Grounds of Abandonment and Nonuse

DEPARTMENT OF COMMERCE
Patent and Trademark Office

Federal Register Volume 82, Issue 93 (May 16, 2017)

The United States Patent and Trademark Office (``USPTO'') seeks comments from stakeholders, mark owners, and all those interested in the maintenance of an accurate U.S. Trademark Register, on the establishment of a streamlined version of the existing inter partes abandonment and nonuse grounds for cancellation before the USPTO's Trademark Trial and Appeal Board (``TTAB'').

[Federal Register Volume 82, Number 93 (Tuesday, May 16, 2017)]
[Notices]
[Pages 22517-22519]
From the Federal Register Online  [www.thefederalregister.org]
[FR Doc No: 2017-09856]


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DEPARTMENT OF COMMERCE

 Patent and Trademark Office

[Docket No.: PTO-T-2017-0012]


Improving the Accuracy of the Trademark Register: Request for 
Comments on Possible Streamlined Version of Cancellation Proceedings on 
Grounds of Abandonment and Nonuse

AGENCY: United States Patent and Trademark Office, Commerce.

ACTION: Request for comments.

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SUMMARY: The United States Patent and Trademark Office (``USPTO'') 
seeks comments from stakeholders, mark owners, and all those interested 
in the maintenance of an accurate U.S. Trademark Register, on the 
establishment of a streamlined version of the existing inter partes 
abandonment and nonuse grounds for cancellation before the USPTO's 
Trademark Trial and Appeal Board (``TTAB'').

DATES: To ensure consideration, comments should be submitted no later 
than August 14, 2017.

ADDRESSES: Comments should be sent by electronic mail message over the 
Internet addressed to: [email protected] or to the following 
address: United States Patent and Trademark Office, Trademark Trial and 
Appeal Board, P.O. Box 1451, Alexandria, VA 22313-1451, ATTN: Cynthia 
Lynch.
    The comments will be available for public inspection via the USPTO 
Web site at http://www.uspto.gov. Because comments will be made 
available for public inspection, information that the submitter does 
not desire to make public, such as an address or phone number, should 
not be included in the comments.

FOR FURTHER INFORMATION CONTACT: Cynthia Lynch, Trademark Trial and 
Appeal Board, by email at [email protected] or by telephone at 
(571) 272-8742.

SUPPLEMENTARY INFORMATION:

Background

    As part of the USPTO's ongoing effort to improve the accuracy of 
the U.S. Trademark Register, the USPTO has been consulting with 
stakeholders on

[[Page 22518]]

ways to eliminate from the Register registrations for marks that are 
not in use. Stakeholders asked the USPTO to consider creating 
additional tools to facilitate challenges by interested parties to 
registrations for unused marks. The USPTO considered cost and 
efficiency, the potential for abuse of any such tools, U.S. treaty 
obligations, and the existing legal framework for abandonment, nonuse, 
and registration-maintenance requirements.
    The USPTO has assessed many options, including making statutory and 
regulatory changes, as part of this ongoing effort and has decided to 
prioritize proposals for modifying existing regulations at this time. 
Accordingly, this Request for Comments addresses an option for a 
streamlined version of the existing inter partes abandonment and nonuse 
grounds for cancellation before the TTAB (``Streamlined 
Proceedings'').\1\
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    \1\ If this Streamlined Proceedings proposal is implemented, the 
USPTO will have a better sense of whether the proceedings are 
effective for their intended purpose and can then evaluate whether 
proposals necessitating statutory amendment also would be useful.
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Streamlined Proceedings

    Under existing law, cancellation of a registration for nonuse 
requires a showing of either: (1) Abandonment as to some or all of the 
goods/services (nonuse plus intention not to resume use); or (2) no use 
for some or all of the goods/services in a Section 1-based registration 
prior to the relevant operative date (i.e., filing date, date of 
amendment to allege use, or date of statement of use). The USPTO is 
considering offering a streamlined TTAB cancellation proceeding limited 
to the assertion of one or both of these claims. No other possible 
grounds for cancellation would be included in the Streamlined 
Proceedings.
    The introduction of this flexibility in the relevant rules would 
include specific procedures and timing to facilitate speed and 
efficiency, including that the evidence must be submitted with the 
pleadings, very limited discovery only when granted by the TTAB for 
good cause shown, an abbreviated schedule, no oral hearing, and 
issuance of the TTAB's decision within an expedited timeframe. These 
proceedings would provide a significantly streamlined process because 
pleading, presentation of evidence, and limited briefing would occur 
simultaneously. The fee for a petition to cancel in a Streamlined 
Proceeding would be lower than for a petition in a full proceeding--
with possible fees totaling $300 per class when filing through the 
Electronic System for Trademark Trials and Appeals (ESTTA), or $400 per 
class when filing on paper.
    A petition to cancel in a Streamlined Proceeding would be required 
to set forth facts to establish the petitioner's standing and set forth 
with particularity the factual basis for the ground(s) asserted as the 
basis for cancellation. While the Streamlined Proceedings would be 
limited to assertion of two possible grounds, there may be cases in 
which the petitioner would assert both; and in that scenario, each 
ground would have to be stated with particularity. Additionally, the 
petition would be required to be supported by the proof upon which the 
petitioner relies to establish both standing and the claim of 
abandonment and/or nonuse. As proof for the claim, for example, a 
petitioner might provide a declaration outlining a search for use of 
the mark and the results, or other evidence of abandonment or nonuse.
    The respondent's answer would be required within 40 days. In 
addition to the requirement that the respondent admit or deny the 
averments in the petition and, if applicable, state the defenses of 
either estoppel or prior judgments, the answer would be required to 
also include proof of use or other evidence on which the respondent 
seeks to rely to counter the abandonment or nonuse grounds for the 
goods or services as to which the grounds have been alleged, or to 
support any pleaded defenses.
    After reviewing the answer and proof, within 40 days the petitioner 
may elect to:
    (1) Reply, providing any rebuttal evidence, thereby submitting the 
Streamlined Proceeding for decision by the TTAB (typically within 90 
days);
    (2) Withdraw the petition for cancellation without prejudicing the 
right to file another cancellation proceeding on grounds other than the 
grounds raised in the Streamlined Proceeding; or
    (3) File a notice of conversion to a full cancellation proceeding, 
along with the appropriate fee and any proposed amendment of the 
petition to cancel, including adding other grounds for cancellation. 
Upon any such conversion to a full proceeding, the TTAB would designate 
a time within which an amended answer must be filed, and issue a trial 
order setting deadlines and dates to allow for disclosures, discovery, 
trial and briefing. The cancellation proceeding then would continue 
pursuant to the usual practices and rules for non-streamlined 
proceedings. Notably, the respondent would not have the option of 
converting to a full TTAB proceeding.\2\ However, both parties would 
retain the right to judicial review of TTAB decisions in Streamlined 
Proceedings, under 15 U.S.C. 1071.
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    \2\ Given that the respondent, rather than the petitioner, 
generally has the relevant information about use, the respondent 
would seem to have no legitimate need for a full proceeding. 
Although the USPTO considered some stakeholder suggestions that the 
respondent also have the conversion option, the USPTO concluded that 
such a mechanism would undercut the speed and efficiency for a 
petitioner and result in the streamlined proceedings lacking any 
real benefit over existing cancellation procedures.
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    At the time of the answer, the respondent may, by separate motion, 
request limited discovery solely on the issue of standing, based on a 
showing of good cause. Upon the grant of such a motion, the TTAB would 
issue an order setting the deadline for discovery and deadlines by 
which the respondent may submit a motion to challenge standing and by 
which the petitioner may respond to such a motion, if filed. The TTAB 
would grant such a motion only when it appears that discovery could 
provide outcome determinative information with respect to standing. 
Such a motion would not stay or otherwise extend deadlines. Regardless 
of the request for discovery or any challenge to standing, the 
respondent must nonetheless still timely answer the petition and 
provide its proof, and the petitioner must provide any reply brief or 
conversion request.
    Counterclaims would not be permitted in Streamlined Proceedings. To 
the extent that a respondent believes that it has the basis for a 
counterclaim, it would have to bring the claim in a separate 
proceeding. As a general rule, suspensions would be rare and would 
typically be available only when there is concurrent district court 
litigation involving the same mark(s) and issue(s).
    The Streamlined Proceedings could offer a substantially quicker 
schedule than a full cancellation proceeding. In the case of a default 
judgment where the respondent does not respond to the petition, the 
entire proceeding could conclude within approximately 70 days. In a 
case where a respondent elects to respond, the entire proceeding could 
conclude within approximately 170 days in most cases. Extensions of 
time for the answer or reply would be limited to one per party.

Request for Public Comments

    The USPTO is requesting written public comments on the Streamlined 
Proceedings, as outlined above, or other options for a streamlined 
version of the existing inter partes abandonment and nonuse grounds for 
cancellation before

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the TTAB. The Office also invites any other input the public wishes to 
convey about the topics addressed in this Request for Comments.

    Dated: May 10, 2017.
Michelle K. Lee,
Under Secretary of Commerce for Intellectual Property and Director of 
the United States Patent and Trademark Office.
[FR Doc. 2017-09856 Filed 5-15-17; 8:45 am]
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