Good afternoon, thank you all for attending today's roundtable
on the implementation of the Trademark Modernization Act, or
TMA. This round table is being recorded and will be made
available for viewing on the USPTO website within two to
three weeks. If you have general questions during the round table
or would like to request provide comments today, please send an
email to TM underscore webinar
at uspto.gov. If you would like to submit written
comments, please email them tmfeedback@uspto.gov. Now I
will turn it over to Commissioner for trademarks,
David Gooder to provide opening remarks. Commissioner
Gooder.
Thanks, Tasha, good afternoon and welcome everyone. Thank you
for joining us in this virtual roundtable regarding the
implementation of the Trademark Modernization Act. Really, the
first significant change in trademark law in probably 15
years. One year ago tomorrow, I was sworn in as Commissioner for
trademarks, and although I've been a trademark lawyer for my
entire career as a lawyer in this past year, I've seen the
trademark ecosystem from many new and different perspectives.
One of those is the damage being done to our trademark register
and the need to better protect it for not only trademark
owners, but TM practitioners as well. I know we're all in
agreement that the register must be accurate in order to be
really useful to establish companies as well as startups.
And entrepreneurs, the critical business and branding decisions
that they may rely on that unfortunately our register is
being plagued by bogus claims of use and Deadwood registration.
Over the past few years, we've been busy with multiple
initiatives to address these concerns and to increase the
accuracy of the register. Like most countries, we started
requiring foreign applicants to have US counsel when filing
submission. We increased scrutiny scrutiny of the proof
of use required to support registration in both
examination. And post registration processes and more
than two years ago we launched a special task force that not only
investigate suspicious behavior and troublesome trends, but goes
after those attempting to cause
it. And we're pursuing login requirements that will increase
our database security in the future and allow us to better
trace bad actors in our system.
Well, these are all strong weapons in our Arsenal. Will
soon have a new tool and it's called the Trademark
Modernization Act for the USPTO. The teammate does the following
things. First, it codifies the letter of protest procedure
designed to allow third parties to submit evidence during the
examination of an application as an in such as claims of use in
an application that the petitioner believes are
inaccurate. Secondly, the legislation gives the US PTO the
authority to shorten response
deadlines. So that suspicious applications could be handled
and disposed of more quickly.
3rd, the legislation provides new, non use cancellation
mechanisms, expungement, and re examination that allow
registrations that are not in use as required to be
challenged either by third parties or by the director on
their own initiative. The good news is that the TMA provides
a number of useful tools to protect and improve the
integrity of the trademark register. The challenging news
is that we only have one year to get it implemented and we
want to accomplish out in a way that best serves the
entire trademark community.
And it's with that in mind that we are delighted to have this
opportunity today to get your feedback on the TMA. Later this
spring, we will publish a notice of proposed Rulemaking to
implement the provisions of the
Act. And as we embark on this path, we want to ensure that we
consider all of your input, which is why we're here today.
Please know that your input and feedback will be carefully
considered and before we move ahead today, I'd just like to
thank all of you. The participants that have taken
time to join us today, and especially those who have
prepared comments for today's event. I'd like to thank our
speakers from the office, Amy Cotton, acting Deputy
Commissioner for Trademark examination Policy, and Jerry
Rogers, Chief Administrative judge of the TTAB
and everyone who work behind the scenes to make this roundtable
happen. And to all of you thank you for taking time out of your
busy schedule to join us today. Your contributions will go a
long way to helping make the TMA the best it can be in. To ensure
that the US trademark register remains at the forefront of
promoting IP accuracy and integrity throughout the world.
Thank you.
And now I will turn it over to Amy, I believe.
Thank you Dave.
I need this. The slides given over me.
There we go.
Thank you so much everyone for coming today. I wanted to
share that the office is appreciation for all the
input that do you have given us and will continue to give
us as we develop this rule package. Dave did set the
stage a bit for us but I wanted to go into that a
little bit more. The broader context of why the register
protection initiatives that the USPTO is pursuing.
In recent years, the PTO has received an increasing number of
trademark filings with questionable, questionable and
sometimes bogus claims of use.
Use matters because the US trademark requires the
trademarks be used on goods or in connection with services as a
condition for obtaining and maintaining the US registration.
Furthermore, this use requirement ensures that the
Federal Trademark Register reflects actual marketplace use
of the trademarks that allows entrepreneurs, innovators and
brand owners to make better, better marketing and branding
decisions. Bogus use claims devalue the usefulness of the
Register for businesses.
Registrations that are not accurate or invalid in their
subject to challenge by third parties.
But until they are challenged, these invalid registrations take
up space on the trademark
register. Creating clearance problems for you and increasing
the cost of doing business.
Registrations procured through false claims of use or other
improper behaviors. Call into question, not just the accuracy
of the US trademark register, but the integrity of the
register and those registrations. The USPTO issues.
If the USPTO issues registrations at lack integrity,
the value of those registrations
diminishes. Likewise, the USPTO loses the trust of our customers
when they receive scams and solicitations that trick them
into paying for services they don't need or never get.
So we have been working on register protection initiatives
for quite some time. Our goal is to improve the accuracy of the
sub missions that we receive.
Accurate submissions allow us to increase examination efficiency
and get you your registrations
faster. Accurate submissions allow us to issue accurate
registrations that hold up better against challenges in
court. Sometimes inaccurate submissions are generated
through mistake or misunderstanding of US laws or
rules, other times inaccurate register submissions are due to
bad intent or bad behavior.
So to improve the accuracy, the submissions we have to detur bad
behavior. And here are some of the tools we have employed to
achieve those goals. As noted by
Dave. First, the Special task Forces that group that's
responsible for investigating improper behaviors and scams and
evaluating whether sanctions are necessary to address them.
Log in now is mandatory for anyone filing electronic form
that that allows us to better track filing behaviors. There
are two more forthcoming phases. Identity proofing in
role based access which will further further increase
database security.
On scams we have limited legal authority to take action against
scans and solicitations, so we're really focused on
education, an outreach to alert our customers of scams and to
share information with law enforcement agencies
investigating bad actors.
As for the post registration audit program
that's been in place since 2012, it clearly shows that
registrants are consistently filing
inaccurate use claims in their maintenance filings.
To address this, USPTO is now charging $250 per class
deletion fee every time a registrant files a maintenance
filing that, upon examination or audit is found to be
deficient as to use claims.
You all know about the US Council rule. We followed the
practice of most other countries and last year we started
requiring foreign domiciliary's to be represented by US license
attorney. This rule is designed to improve the quality of
submissions by requiring the use of attorneys who are bound by
ethical rules to follow USPTO rules of practice and their own
State Bar codes of conduct.
As Dave noted, we've increased specimen scrutiny, specimens of
use, and we've issued guidance designed to give our examining
attorneys more power to issue specimen refusals. When the
specimens on their face raise questions about their
legitimacy. We are also working to refine and implement it tools
to assist with identifying doctored or fake specimens.
Now Lastly, as Dave noted, the TMA provides additional tools to
advance our strategy of
increasing act. See of our trademark register.
About two years ago when we were facing a surge of applications
with sketchy specimens, Congress asked us how they could help us
to respond. We asked for these tools that are in the TNA. First
we asked if the letter of protest procedure could be
codified so that we could have clear authority to charge a fee.
And to cover the cost of the
procedure. Next we asked for authority to shorten the six
months response period so we could move suspicious
applications through the system
faster. Lastly, we asked for non use cancellation procedures that
were faster and cheaper than trademark trial and appeal board
proceedings that weren't were not a default judgment.
So first with letters of protest. This procedure of
course has been in place for years, and all the TMA does is
quantify that practice with a
few minor tweaks. Typically, third parties cannot intervene
in someone elses trademark application without filing an
opposition at the TTAB. The letter of protest procedure
allows third parties to send evidence to the USPTO regarding
another application. We review that evidence and determine
whether the evidence is relevant to a ground of refusal and if
so, we forward that evidence to the examining attorney. This is
a way for third parties to bring something to your attention that
we might otherwise have missed or we don't have access to.
The tweaks that I spoke of exist to the existing letter. Protest
procedures are the legislation authorizes us to charge a fee
which is now $50. Second, Congress imposed a two month
time limit for us to send the relevant evidence to the
examining attorney. Everything else remains exactly as it has
been for years, as outlined in the Trademark Manual of
Examining Procedure.
Next we have the flexible
response period. Typically, as you know, applicants have six
months to respond to an office action. Our data suggests that
some applicants take advantage of the full six months before
responding, but many others move quickly to respond to the office
action. The full six month time period may be reasonable and
even necessary for complex office action. However, for
responses to office actions with fewer refusals or simple
requirements like US Council, six months is too long that lag
time means that applications are taking up space in our system
longer than they really need to.
The TMA authority would allow us to shorten response times to
increase examination efficiency and decrease pendency.
How short should the time periods be and when shorter
periods would be offered or topics to be determined in
our rulemaking process and we welcome your input on
this question.
The GMA includes two new mechanisms for getting Deadwood
off the register. The key things to remember about these new
proceedings or that number one they're not abandonment
proceeding, so intent to resume, use or commence uses not
relevant. Two, they are non use cancellation proceedings where
use was required as of a certain date, and there's evidence that
the mark was not in use as of
that date. #3, these proceedings are before the director without
having to file a petition petition to cancel at the board.
The goal, of course, is to create processes that are
potentially quicker and cheaper than a board proceeding that's
not likely to result in a default judgment. That is, there
are two targets of these proceedings. Number one, those
marks that were never used.
And to those were not used as of the relevant date.
Further, you should know the expungement claim will also be
available at that ETA B as a new section 14 ground for
cancellation of registrations where the mark was never used in
Commerce. This claim does not supplant or replace existing
nonuse claims at the board and expungement claim can be
combined with other claims, including nonuse or
abandonment claims in petitions to cancel at the
board.
To start the proceeding before the director, a third party or
the director must submit a request to Institute an
expungement or reexamination
proceeding. The requests can cover some or all of the goods
or services in a registration.
And those rules, the rules that we're working on will need to
address in more depth what would be required in such a
request. But here are the basics as laid out in the
statute.
Under the statute, any person can request proceedings be
instituted. This means that there's no standing requirement.
The director may also request proceedings to be instituted
against a registration. Expungement proceedings can be
requested as to use based registrations as well as those
registrations under issued under Section 44 or 66.
Reexamination proceedings can be requested as to use based
registrations where use was required either at filing or at
the SOUAU stage.
If a if a registrant submitted specimens to us that were
accepted but based on other evidence should not have been
a third party or the director can request reexamination of
that claim of use.
Under the statute, excusable Nonuse is only available as to a
Section 44 or 66. Registration in an expungement proceding
excusable nonuse is not available as a defense in a
Section 1 expungement proceeding or reexamination proceeding.
This is because the USPTO would not have accepted a claim of the
excusable nonuse as of the date of application and a Section 1
application or the data. The statement of User Amendment to
allege use in a Section 1B application, an expungement or
examination proceeding is looking back as to whether that
claim. That use claim during the application examination process
was accurate. Excusable Nonuse would not have been accepted
then. It cannot be relied upon by the restaurant now to to
defeat against the claim of non use as there was relevant
dates in an expungement or reexamination proceeding.
The request for institution of these proceedings can only
happen during certain windows of time. This is a quiet title
provision and designed to
prevent abuse. For expungement that window is year three to
your 10 post registration for exam, that window is from year
zero to your five post
registration. However, the TMA provides it for the first three
years after enactment. Any registration, regardless of how
old it is, maybe subjects to request of institution for an
expungement proceeding. Where the registrar cannot
establish use of the challenge, goods or
services those goods or services will be cancelled
from the registration in whole or in part.
The registrant may appeal any resulting cancellation from
the director to the TTV and then to the Court of Appeals
for the Federal Circuit.
As for abuse provisions, the Statute provides that once a
good or service is attacked, is attacked and survives
because use was established. Those goods or services can
ever be attacked again.
We are drafting rules to design these proceedings right now.
While we're looking for feedback feedback on any aspect of TMI
implementation, we are especially interested to hear
from you on the issues listed. Heater, what should constitute a
reasonable investigation? What are the general types of
evidence that could support a
prime aphasia case? What should the set response an extension
times periods be? What limits should be set on the number of
petitions for particular
registration? How should an expungement and reexamination
proceedings? How should they relate to other proceedings
concerning that same trademark registration?
As Dave noted, we have one year to implement. These proceedings
were working on a draft rule package and will be sending it
through clearance within the administration in the coming
month. We will issue the notice of Proposed rulemaking. The NPRM
in the spring on
thefederalregister.gov site. Once the NPRM issues, we will
hold a public roundtable to collect feedback on the actual
text of the proposed rules.
All public comments should be submitted in writing to
thefederalregister.gov site at that time. Of course, once we
receive those comments, we will assimilate and respond to
those comments in the final rule. That final rule will
publish in December.
We are required to implement the expungement in
reexamination proceedings by December 27th, 2021. The
letter of protest procedures are also required to be
implemented by that date. But of course, those are actually
already implemented in practice for many years and by
rule as of this past January 2, 2021. In the trademark fee
adjustment rule.
The implementation of the flexible response period does
not have a deadline for implementation. Nonetheless,
in light of the surge of applications we're currently
experiencing, we are interested in pursuing the
flexibility inherent in the TMI statute so that we can
address efficiencies in examination.
As for USPTO resources, we have a team, a web page that includes
links to the legislation and an email box for your feedback on
TMA implementation. We want to hear from you through that
through that email box. Once we receive input, we were putting
all stakeholder input on our web page so you can review the
suggestions that have already been made and we're using that
feedback of feedback to shape the rule package as we draft it
right now. Once the notice of proposed rulemaking issues, we
will do this in this whole consultation process again to
see what you think of what we drafted based on your input
this time around.
As for today, we're delighted to have so many speakers share
their views. We want to move forward to that right now.
Keep in mind, each speaker will have 5 minutes. Then when
there's one minute left, a notice will appear on the
screen. Please wrap up. So then we can meet next move.
Move to the next speaker.
And with that.
I'd like to move to the first speaker to give remarks today.
Which is.
Ted Davis, I believe.
Mr. Davis, you should be being elevated to a panelist.
Student self.
Hi this is Ted Davis with Kilpatrick Townsend. I
appreciate the opportunity to comment today. I have two
personal concerns regarding the rule making the first of which
is that the statute itself either defines the response of
obligation of a registrant targeted by one of the new
proceedings. Nor directs the Office 2 to engage in rulemaking
on the issue. This issue has been raised by some of the
intellectual property constituencies and I therefore
won't belabor it here except to note that it is arisen with
increasing frequency in my discussions about the TMI.
With our firm's clients and just to give you 2 examples that have
arisen, the first is whether a sworn verification of a
responsive showing is necessary. Another's weather everything.
The registrants submitted as part of, say, a secondary
meeting showing will automatically be a matter of
record, as would be the case in an ex parte proceeding. Or
Alternatively, is all that matters. What the registrants
submits in the course of the preceding, the nature of the
registrants responses showing is significant enough of an issue
that registrants. Should not have to wait until the case law
gives them definite answers, perhaps years from now. And I
therefore hope the rules will
preemptively address it. The second issue cuts in the
opposite direction, and it relates to the potential
consequences of a registrant failing to carry its burden in
one of the two ex parte proceedings, the statute
contemplates the director will Cherry pick a problem good or
service out of the registration in question. But if that's the
sole con cequence, the offices experienced may well be similar
to what happened under the original iteration of the Post
registration Audit program, which is that registrants who
know they don't have use will simply ignore the proceedings.
And if as many of us have heard from the House subcommittee
staffers that the goal is to change registrants behavior on
the front end, it seems that something more should be
required of a registrat and the circumstances. Perhaps, for
example, a fee to keep the remainder of the registration up
and running again. Thank you for the opportunity to comment.
Thank you very much. I appreciate your comments. Next
we have Allison Rickets an I believe she has slides that we
will be projecting as well.
I'm Allison Strickland Ricketts. I'm a partner with cross sell
Nick and I appreciate the opportunity to comment on the
planned implementation of the TMA next slide, please.
My questions relate largely to how the new proceedings
will be integrated with existing proceedings. So, for
example, once a actually there was a slide before this
one, or there should be.
Man.
This should be slide #3. There we go. So once a proceeding is
commenced will registrants be able to file a Section 7 request
to amend their registration such as to delete goods at issue in
the preceding and if so, will the fee for Section 7, that is,
only deleting classes, goods and services be waived, as was the
new rule announced in the recent fee setting that went into
effect on January 2, 2021.
Next slide, please.
Similar question about filing a voluntary surrender. Wants a
proceeding is commenced, will or registrant be able to file a
voluntary surrender of the registration or portion of the
registration you know, such as to delete goods at issue in the
proceeding. In my view, this should be permitted since the
animating purpose of the new provisions is to remove Deadwood
from the register. I think that perhaps even the notice
notifying a registrant of implementation of the preceding
might inform them of these avenues that are available.
To go ahead and respond to the notice by deleting the goods
that are not in use, I would just observe to that right now
there is no obligation on section 44 and 66 registrants to
delete anything until the time comes to file the Section 8 or
71 at between the 5th and 6th year anniversary, but it may
well be that some of them would be willing to do so at an
earlier time if such a proceeding is commenced. So I
think that they should be given
that opportunity. To do so, but perhaps less expensive, will
certainly less expense to them, and less expense to the office
who are evaluating all the evidence of use or non use. It
might be provided, and in the event that registrants opt to
take advantage of. Filing of Section 7 or a voluntary
surrender and resolving the proceeding in that manner.
Might the petitioner receive a refund of part of its fee
since the office won't have to do the second half of the
work. Next slide please.
The next question relates to timing. When a Section 8 or 71
declaration comes do during the pendency of an expungement
proceding 'cause those can be between years 3 and 10. I assume
that the registrant will be still allowed to file it Section
8 or 71, which is required in order to maintain its
registration, but perhaps it would be good if the rules made
clear that you know the registrant is still afforded an
opportunity to make that to make those filings an, I would assume
to. That they will be allowed to delete goods if they're filing a
Section 8 or 71, just as they would in ordinary course, even
if there is a proceeding.
An expungement proceding that's that's open against
them. And then, if all the goods and services at issue in
the preceding or deleted as result of a Section 8 or 71
filing, what will be the disposition of the expungement
proceding next slide please.
Likewise, if a registration is involved in an Inter partes
proceeding at the board or Federal Court litigation, that
could result in cancellation of the registration in whole or in
part can expungement and RE exam proceedings be instituted
nonetheless? Does it depend on what the basis for the
cancellation is? IE likelihood of confusion might be different
than if the preceding actually directly addresses allegations
of lack of use.
Or will it proceedings in that event, perhaps we suspended like
GTAV cases sometimes are suspended awaiting the outcome
of a federal court litigation next slide, please.
With regard to the flexible response period, I actually
would urge you to delay implementation of rules to alter
changes to existing response period. There's a lot of work to
be done to meet the statutory requirement to implement the
expungement Anri exam by December 27. And this is true on
the policy side in the rulemaking site as well as on
the back end of creating systems to provide this new
functionality. And I just heard you announced that you're also
still planning to try to introduce some of the.
Other security features with logins and role based access to
the system. That sounds like a lot going on to me to try to
implement, and I think that since you aren't obligated to
change the response periods, I think it would just produce a
lot of extra work at a time when you need to be focused on the
things that have to be done in time. I guess if you want to
make shorter response periods for simply in cases where non US
domiciled entities haven't.
Appointed under Turney, that might be one discrete case where
it would be warranted an worthwhile, but as a larger
issue I would. I would urge you
to delay that. Thank you very much.
Thank you Allison. I appreciate
your comments. Next we have Michael Chiappetta, Mr Cooper.
Yes, can you hear me?
Yes, we can. OK great yes I so my name is Mike Chupeta. I'm
from practical. My question concerns the new cancellation
claim based on non use. Section 14 has been amended to allow a
cancellation claim based on complete non use and that claim
may not be asserted until three years after the registration
issues. The step story language
also says. That nothing in this provision shall be construed to
limit the timing applicable to any other grounds for
cancellation. That the new claim, I think, can fairly be
characterized as a non use claim and seems to establish this firm
three year period during which one can assert it, but the
traditional avoid ABBA Nishio Nonuse claim could be asserted
within at anytime within five years after registration. The
question is whether the traditional void AB initio non
use claim qualifies as another ground for cancellation such
that it is unaffected.
So can I assert that traditional void abbonizio Nonuse claim
during the first three years of registration? Now I know, I just
note that Amy indicated in her opening remarks that this claim
will not replace existing Nonuse claims, but I suppose my concern
is that if this is not clarified in the regulations, a defendant
inevitably will argue that avoid Ave Seal claimed is subject to
the three year limitation.
And I just want to avoid this situation where the TTB has two.
TTV has to interpret.
The statutory intent, and so I just thought this is something
that should be flagged and perhaps clarified in the
regulations when they when they are issued. I just also know
that this if.
If the Void app initial claims still stands, assuming it does,
it seems to render the three year limitation in the statutory
language fairly meaningless. I mean, I can't challenge a one
year old registration on the ground that it's never been
used, but I can assert a claim that it wasn't. It wasn't in use
as of the application filing date, or as of the date of an
allegation of use was filed. If it's an intent to use
application, this just seems counter intuitive to me, but
that's all I have to say.
Thank you so much Mike. Appreciate that next speaker we
have Eric Perot.
Mr Pro, you're on.
Great.
I can hear you excellent and I really appreciate the USP to
providing this forum to discuss the thoughts on the TMA may
partner with Bourbon Perot in Washington DC and I do think
that there's been no bigger threat to the integrity of the
US trademark registry then this influx of fraudulent
applications, and we've seen it for the past at least four
years. And the problem continues to grow for a little bit of
context. That kind of applications that the
expungement and reexamination proceeding would pre
particularly helpful against. Or some of these like.
150 applications filed by a single attorney that contains
the goods, false beards and another the same attorney who
filed a baffling combination of cages for household pets. Cruet
sets for oil and vinegar and ski, wax brushes and so I think
that these are the new proceedings would be
particularly helpful in going after those types of
applications that seem you're highly unlikely to ever have
actual use together, and the questions that I have in
particular are. How this would be most useful to trademark
owners an the first is that I understand this procedure that
expungement reexamination is would be faster and cheaper than
a contested dispute at the TTB. But with the parties that are
involved, I believe that the.
This would be most useful if it was faster and cheaper than at
least as fast, or at least as cheap as a default judgment
before the USPTO is. Most of the parties that would be subject to
these would not be in a position to respond with use, given that
the wide ranging applications that they applied for and if
there is a way to make it that it is as fast as a default
judgment, I think that would be preferable. Right now, a
petition to cancel a single
class application. Is $600 with a $200 refunded fee where the
claim is based on non use or abandonment and receives a
default judgment and we can get that done in about 92120 days.
That keeps increasing but ultimately that is kind of what
we're working with right now to make a very similar nonuse claim
before the board. If expungement in reexamination is more
expensive or it takes more time than I believe, many of the
clients that I represent will likely just go the route of the
TTB. Given the types of applications that they are and
they high likelihood that they will receive a default judgment
in response to the claims that are being made, and which would
further put burden on the TTB that is already experiencing a
strain of increased filings and
pendency times. For flexible deadlines, I think that the
biggest key is is predictability because the with docketing
systems and another yeah other things to try to determine what
a due date is for any particular proceeding should be across the
board. It should not be up to each examining attorney to have
the discretion to set shorter deadlines and it should not be
on a case by case basis.
For letters of protest, we're thrilled that Congress has
qualified this. We think it's under used system that gives
trademark owners the chance to head off an expensive time,
consuming Inter partes proceeding and provide the
examining attorney with additional context and
information that they may not have been able to have access to
in the short period of time that they examine this. However, my
concern is the new mandate of a 60 day period with the current
staffing of the Petitions Office. I believe that will be
difficult to reach because of.
Just the influx of new petitions and causing a delay
and you ultimately making sure that the staff members,
whether their attorneys or administrative staff, have
the training and manpower necessary to meet these new
requirements or the TMA something we really think
would be important to the success of this program.
Thank you very much Mr Bro. Appreciate your comments. The
next speaker we have is a Daniel
Kelly. Mr Kelly.
Yes, can you hear me?
Yes, I can hear you great. Thank you. Good morning, good
afternoon. My name is Dan Kelly. I am deputy general counsel at
Vista Outdoor and Vista Outdoor is a House of brands we own such
brands as camelback water bottles, dull helmets, and
Bushnell optics. I just wanted to flag really 11 issue
regarding reexamination expungement certainly
acknowledged the Deadwood problem and glad to see that
we're taking steps to address
that. My concern is that in fixing that issue, we don't
create other problems, and in particular of drawn analogy too.
The rise of online commercial marketplaces and platforms when
those systems were built, I think few people envisioned the
breath of problems that would engender regarding counterfeit
products. And of course many parties have taken steps to
address those, including the platforms themselves have
created robust systems that are designed to empower companies to
report counterfeits and have them taken down, unfortunately.
This has led to an even further problem, which is that in
certain places those systems themselves are then abused quite
often by by competitors filing what are called false flag,
takedowns and whatnot.
So this is really just to sort of take a lesson. From that. We
could also think analogy, analogously to a little over a
decade ago when patent marking statutes were abused by
opportunists. So I just wanted to encourage those who are
involved in the rulemaking process to consider carefully
all of the potentials for abuse is that can arise.
And think through and plan for potential bad actors or abuse is
at the outset. Liam, I've three ideas concretely to suggest in
this regard, and this is probably by no means a complete
list, or perhaps even the best ideas, but one is making filing
fees significant enough to Ward off nuisance filings. Secondly,
consider perjury recourse for bad faith filings, and then
third, irrespective of those other two suggestions, consider
implementing something along the lines of a three strikes rule
against frivolous filings.
And those are my comments. Thank you.
Thank you very much Mr Kelly.
Next we have Michael Kelly.
Hello. Can you hear me, Michael? Yes, we can hear you great.
Thank you and good afternoon. I'd like to thank Commissioner
Gooder, Deputy Commissioner Cotton and Chief Judge Rogers
for the opportunity to provide input regarding the
implementation of the Trademark
Modernization Act. My name is Michael Kelly and I am a senior
corporate counsel of intellectual property at Amazon.
Amazon appreciates the dedication and hard work that
the office has put into this process. By soliciting these
comments and receiving stakeholder feedback, we applaud
the office is active engagement with all these stakeholders to
maintain the integrity of the US trademark register. Remove
improper trademark registrations, stop bad actors
from obtaining rights that they shouldn't, and close gaps to
reduce vectors of abuse.
Amazon is a large customer and steadfast supporter of the
Trademark Office. Trademarks are vital to Amazon's global
business, both to our own business and just as importantly
to the numerous selling partners who build and grow their
businesses on Amazon.
Friends are vital to commercial identity. An
establishing customer trust to safeguard the integrity of the
Trademark Office. The implementation of the
Trademark Modernization Act should avoid unintended
consequences that might open up new abuse vectors to bad
actors or complicate the trademark application process
to a degree that limits the access of small businesses and
those who choose to file their own trademark applications.
To that end, our common say
concern. Potential abuse of the newly established ex parte
procedures in the Trademark Modernization Act and ensuring
clarity and consistency in response times during
prosecution of trademark
applications. There must be sufficient gatekeeping
mechanisms to avoid potential abuse of the new ex parte
procedures to discourage bad actors who would undermine the
goals of the Trademark Modernization Act. There are
several potential gatekeeping mechanisms that we propose as
options for consideration, including one establishing an
appropriate bar for reasonable investigations and the evidence
that would support an ex parte
proceeding. Two filing fees, at least comperable to those for
opposition and cancellation
proceedings. And three low cost and low friction means
of dismissing ex parte proceedings when it can be
quickly established that a preceding lacks merit.
With spectres, flexible response periods, Amazon believes the
clarity consistency of response period will be best to serve the
goals of the Trademark Modernization Act. While there
may be a place for examining attorney discretion response
periods of less than six months should be used sparingly.
Reserving shorter response periods for refusals that are
linked to abuse vectors observed by the office or non substantive
refusals helps avoid a potentially disproportionate
negative impact on small businesses and less
sophisticated followers who are possibly more susceptible to
procedural default when faced with flexible response times.
Amazon appreciates the opportunity to provide input
on the Trademark Modernization Act implementation process and
is standing by to help support the Trademark Office on
implementing the bill as the process goes forward. Thank
you for allowing Amazon to provide these comments.
Thank you so much Mike. Appreciate your your comments.
Next, we have John Chau.
OK, I understand that John Chau is not online.
So we will move to our next speaker, Thomas Brooke.
Thomas Brooke. Are you on line?
OK, I think we'll be moving on.
We have
let's see is anger will see me.
You are next. I see you're on camera, but we don't have
audio for you yet.
Looks like we are connected audio, but you're on mute Zynga?
How about now? I think it just unmuted me. I thank you. Yes, I
hear you now. OK, great good afternoon. I'm in single West
center. And um, senior attorney and director for the artworks.
Legal incubator and residency program. I personally was
extremely excited to hear the new procedure set forth.
And the announcement and the trademark Monetization
Modernization Act? I said monetization, always talking
bout how can we monetize intellectual property? But
as a practitioner and more importantly, an educator
that trains new and transitioning attorneys, I'm
thankful with this opportunity to comment and
share a bit of what we experienced. It artworks
working with artists as well as emerging businesses.
The rules that we believe will be most effective and efficient
in the process of applications are expungement procedure and
cancellation based on non use. Flexible response periods for
office actions. Third party submissions as well as the
rebuttable presumption. So, with the expungement many times while
conducting trademark searches on behalf of our clients, we find
goods or services or goods and services in a registration
listed as. Active even though the register has never used that
trademark in Commerce, this procedure will be extremely
effective. We believe in helping businesses obtain trademark
protection and instances where they may have been blocked. You
know, due to these type of registrations where the goods or
services simply are not in use. This rule brings, I believe, a
little bit of fairness to the process and to balance the
process for those that are concerned about this
expungement. There is the examination proceeding, so I'm
glad that that's there.
Next, the flexible response period for office action now.
Contrary to some comments, we believe this rule will be
extremely helpful because oftentimes applicant does not
need the entire six months respond, and when they do
respond many times it results in another issuance of another
office action. And so we just lost a year right two six month
periods. We've lost a year and then many times there still a
final rejection. So we lost a year final rejection and so this
here means an entire year was raced it an granting the
authority to set an office action response for a period
that is shorter than the six months will definitely improve
the process in terms of efficiency. I think the the fix
for the help to balance it out is the fact that.
If an applicant needs more time and say only 60 days will set or
90 days and they need more time, they have the ability within
this rule here to ask for more time if they believe they need
more time. So we believe you know the careful implementation
of this rule. Definitely improve on efficiency as well as address
concerns that have been raised here. We know we trust that the
USPTL will carefully navigate this and create.
You know just a step by step process so people don't get
lossed and I'm not speaking on behalf of a large
Corporation. The majority of our clients are new.
Emerging businesses better just now getting in this game.
The other rule is the third party submissions rule. I love
this one person love with them. We believe that this rule is
extremely helpful and will add more of a judicial process. Feel
at this filing level. Currently, the examiner sort of serves as
Judge Angory an coming from a litigation background myself.
This is always felt slightly
uncomfortable. So with this new rule in place, it will ease some
of that for us litigators, as well as allow you know the
ubiquitous opposing party to have a say so I love this one.
And finally, I think at the bottom of the notice it talked
about the rebuttal presumption of irreparable harm. I think
this is the perfect finishing touch to the Trademark
Modernization Act, because in allowing a trademark owner to
seek injunctive relief at any of these phases serves efficiency
process. We're all about efficiency here. It artworks
because we're trying to get new business, is up and going. We're
trying to work with entrepreneurs, were trying to
work with expanding businesses, and we love it when we can
squeeze. Any kind of efficiency out of it. We deeply believe
that this will allow trademark owners to more effectively
police there mark. And while no rulemaking is, you know
specifically needed to do this.
So simply having USPTO come out in support of this is an amazing
win for new and emerging businesses who often fail in
these early days. In these early stages and simply, you don't
need all the support they can get in this process, so those
are just our comments. Those four really stood out to us and
so on. Behalf of artworks. Thank you for allowing these comments.
Thank you so much for your comments and your enthusiasm. I
appreciate the support. Thank
you. The next speaker we have is nail mathony.
Hi can you hear me?
Yes, I can hear you great. My name is Naomi, Donnie I'm the
CEO of a legal first. Thank you for the present to speak today.
I, like many others, applaud menu to change is the USPT is
making to improve the integrity of the trademark register. There
are a number of trademark service providers like ourselves
that rely on underlying US PTO, trademark data and related APIs
to offer services to the community. In the case of my
company, we provide trademark docking software and rely.
Extensively under TSR API to make that possible as the USPTO
implement the changes under the TMA, we would request that the
USPTO considered a technical implementation and give IP
technology providers using USPTO date. Ample advance warning
of an guidance about what's coming so that they can update
their technology, continue to serve the IP committee and
practitioners will not be affected adversely. Lastly, we
would encourage special care to ensure consistency and
predictability. In setting any flexible office action deadlines
as it would have direct impact on Docketing as well as other
services provided by technology providers. Thank you.
Thank you very much for your comments.
The next speaker we have is Angela Grayson.
Angela R. You
on line. OK, I guess we're going
to. Unmute you so you can speak, I would but.
I don't think we'll have video.
Angela
OK.
I think we'll have the tech people continue to work on that.
Um, so let's move on to the next
speaker. Uh, which is Steve Baird?
Mr Baird are you euro? I see
your. Coming on line here.
Well, wait a few minutes for connection.
Bear with us. We have Mr. Baird coming on line now he's muted.
Thank you, Miss Cotton. Mr Bear can you hear me now?
Yes, I can hear you wonderful. I'm Steve Baird, a shareholder
with Greenberg Traurig. But my remarks today or not, on behalf
of any particular client or the firm. So these are kind of my
personal views as a 30 year practitioner in the trademark
space. And I'd note initially thank you for all of those
speakers that preceded me, their insights and concerns have
really addressed most of the issues or questions that.
I've had about implementation of the TMA, so I'll limit my
remarks instead of kind of piling on to any of those
comments. 2.
Talk about the identity of of the protester. Miss contin. You
mentioned that there really is no standing requirement in the
statute, doesn't contemplate one allowing any person to file to
seek nonuse ex parte proceeding. As is the case with.
The the now codified letter protest procedure, one of the
things that I'll note in that letter of protest protest
procedure. Is that it currently Shields the identity of the
protester without someone seeking a FOIA request too?
Perhaps obtain the filing that that that triggered a refusal
during ex parte examination of a pending application. I'm
wondering whether the officers thought through whether to
maintain that same process and procedure, and I guess I would
encourage the office to think about doing that to maximize
the participation and willingness of protesters too.
Initiate those kinds of those kinds of proceedings. I'd also
note that I think for the success of the program.
It would be important to ensure consistent decisions, and so
while the TMA speaks of examiners decisions and then the
ability of this director.
Unless they overturn an examiner's decision, it doesn't
appear that there's really any process or procedure for
determining who that examine arisen, since these will all be
challenges post registration.
I'm not sure who the office is contemplating having make those
decisions, but I would urge the office to think about a smaller
number of examiners that are going to specially trained to
handle these procedures efficiently and all on the same
page about how to render decissions on a consistent
basis. Thank you very much for the opportunity to raise
these issues and appreciate all the work that the office
is doing in this regard.
Thank you so much for your comments. Mr Baird. We
appreciate that. And so appreciate appreciate their vote
of confidence and support moving on to the next speaker.
We have a Robert Pierce.
Mr. Pierce, are you on line?
You are muted.
Hello, my name is Robert Pierce with Jacobsen home and.
And thank you for the opportunity to be able to
comment on the implementation of the TMI. My guess is going to be
on primarily some mechanics with the expungement slash.
Um? Examination procedure and
then. Brief remarks on the.
Flexible response period.
As far as the expungement goes and the re examination.
I think it's very important that the office promulgates
standards on.
The burden that aid that a registrant has in
responding to a petition under either procedure.
I think based on the.
Language of the statute that the
burden should. The if the.
Registrant can produce.
Sufficient evidence that would justify registration that they
would have met their burden.
Similarly, I would ask that the registrant given.
About the same amount of time period to respond as a defendant
in a opposition cancellation proceeding preceding especially
in this case, because the registrants is going to have to
be able to produce evidence of.
4. Typically multiple goods.
Likewise. We're not likewise, but considering the burden for.
The petitioner in these
proceedings since. The idea here is, is that.
It's you that the definition of use of Commerce is the same as
outlined in the statute that what constitutes reasonable
examination of what constitutes prima fascia case should have
flexible standards based on the relevant trade or industry to
reflect the fact that use in
Commerce. Has a has a flexible standard?
In addition, in the case of expungement, because the
operative word here in the statute is never that any
reasonable investigation will address use overtime.
So the.
It should outline the steps that the petitioner took to
investigate.
You starting from registration.
Through current period through the current period.
As far as the rigs it for the flexible response periods go.
This area strikes me as a potential, has potential
pitfalls for unwary applicants and practitioners,
and could increase costs.
I would like to see.
This to be restricted to or not left in discretion of the
examiner, but rather that there be specific standards and
preference, like just be it apply to ministerial.
Objections such as the.
Need for the US Attorney need for the applicant's
email address.
Things concerning like the applicants address or
entity type.
Things like Mark, Description, Color claims in
those areas and it should not be applied to substantive
refusals under under section two of the trademark at
booting disclaimers. Thank you for your consideration
and I look forward to working with the office on this rule
in the future.
Thank you so much for your comments. I we really appreciate
those. The next speaker we have is Christina Metropolis.
Hi, are you able to hear me? Yes, we can hear you great.
Thank you for the opportunity to speak today. On behalf of the
members of the American Apparel and Footwear Association. My
name is Christina Metropolis and IAM Afas director of brand
protection and manufacturing initiatives. For those of you
not familiar with our Association, we are the National
Trade Association representing apparel, footwear, travel goods,
another some products, companies and their suppliers. We
represent more than 1000 word.
Famous name brands. An AFA is the trusted public policy and
political voice of the apparel and footwear industry. The
apparel and footwear manufacturers and companies who
are part of our membership are increasingly facing challenges
presented by fraudulent and bad faith trademark filers. Many of
our members are particularly concerned with the significant
increase in trademark filings at the USPTO that are clearly
submitted in bad faith. The Trademark Modernization Act is a
good first step in addressing
this challenge. But as our collective membership
emphasizes, there are still significant challenges. AFA
supports the Trademark Modernization Act and believes
it allows new methods to address emerging threats to the US
trademark system and mitigate negative impacts on US
businesses. The law will provide legitimate third parties avenues
to challenge bad faith and fraudulent applications that
were previously not available.
First, this law also gives the USPTO the flexibility to review
an application in less than six months to be determined by
rulemaking. Today, the US PTO must give applicants a minimum
of six months to respond to an office action or inquiry by an
examiner because of statutory limitations. Shortening the time
for an applicant to respond from six months to 90 days or less
would keep pending applications moving through the system.
Decreasing pendency this time frame was set when applicants
had to physically Mail in specimens for inspection.
And does not reflect the online filing system in use today. We
believe that the time should be short and two at the most three
months that an application is pending at each stage.
Second, the law provides several different avenues for third
party. Typically a trademark brand Holder to object and offer
evidence regarding registrations in pending applications. Today,
a third party has no effective and timely path to present
evidence of bad faith or challenge a pending application
or for that matter and issued registration. This legislation
codifies an informal process and makes it a requirement to
include evidence filed in support of an objection within
the application and examiner is required to review challenges.
As part of the application
process. 3rd The last stab Lish is expungement. An ex parte
reexamination as alternatives to challenging a bad faith or
fraudulent application. Today's opposition and cancellation
proceedings are too slow and too costly to provide an Ave for
relief during the clearance process, often taking up to
three years. This law allows third parties to submit evidence
of bad faith and race challenges to bad faith applications.
Earlier on an an expedited resolution schedule. This could
then become a viable means of removing an obstacle to use or
registration as part of the
clearance process. If applications were faster to
challenge, this would be an indirect means of weakening the
publicly reported incentives for filing fraudulent applications.
Collectively, these avenues could become a viable means for
third parties to help declutter the register. As I said, a FA
supports the Trademark Modernization Act and views it
as an incremental step to combat fraudulent applications.
However, our members are members remain concerned that the
expungement ex parte reexamination an letters of
protest continue to put the burden and cost.
On legitimate brand holders to police the trademark registry.
While we are grateful for these additional tools, we're hopeful
that the US PTO will consider measures they can implement
without legislation. We look to the USPTO to work. What to find,
ways to work with industry, and to use existing authority, or
develop new authority to prevent these bad faith registrations
that so clearly harm our trademark members. AFA would
like this to be a partnership with the USPTO, which increases
scrutiny and examination.
Of applications that are coming in, especially those
applications that indicate the marks are in use in closing
the development of IP and a strong means to protect our
Members designs is key to the success of our members. We
appreciate the opportunity to participate in the Round Table
and we look forward to providing written comments
during the rulemaking process. Thank you.
Thank you so much for your comments.
For the next speaker we have Susan Bro Zackscott.
Good afternoon and thank you for this opportunity to speak with
you today and offer some comments about the
implementation of the Trademark Modernization Act. My name is
Susan Brozik Scott and I'm the founder of a small woman owned
business. I multimedia production company based here in
Pittsburgh, PA that launched during the 2008 recession and is
somehow still standing despite rigorous challenges,
particularly those posed in the past year by a global pandemic.
I have to confess that until last week, I did not know that
the TMA had even been passed by
Congress. And signed into law in late December. I do try to
follow IP issues, but 2020 as we can all attest was a year unlike
any other in our lifetimes. We all face the challenges of
keeping ourselves and our families safe, our children
educated, our jobs and businesses afloat. And our
trademark registrations live while at the same time we tried
as a society to process all the other major issues in our
country from a President presidential election, 2 issues
of equality and race.
Fast forward to today, March 1st. Here we are. I found out
Friday would have this chance to give input today. So here
are just a few thoughts I have on the TMI.
First, regarding flexible response period for office
actions that the law says can be short and I understand from the
six month response time down to not less than 60 days.
As a small business owner, I would simply ask you to consider
as you implement this how it will affect people like me. Many
of us, especially women and minority owned small businesses
are uniquely challenged right from the start.
We often struggle for critical initial funding, and by
necessity we invest our own money and wear many hats that
presidents and CEOs in middle and medium to large companies
don't necessarily have to wear.
We juggle projects and multi task, often alone to enable our
companies to survive until we can bring in enough revenue to
hire additional staff. When we respond to office actions. Even
with the representation by an
attorney. We have to stop what we're doing to gather the
evidence or work through with Council. What we need to do or
provide to comply in our world. Six months is doable, but
compressing that response time to two months can create on this
end. A lot of havoc, especially if we have to turn our attention
from a major project on a tight budget and deadline.
And if we need more time to respond if we do have to file
for extensions, I understand that under the new law there
will be new fees now to a large Corporation that this may be a
normal cost of doing business to those of us with far fewer
financial resources. This hurts. It can hurt a lot.
We all know the meter is running on legal fees to. We ask
ourselves how long is this phone call? Was it 30 minute minutes
is in an hour.
How long is it going to take for my attorney to write or call
back? Where is the money going to come from? That's not in the
budget to pay for these additional calls? What if my
attorney is in the middle of a trial or other case as a small
business? Will I get enough of their time and attention in this
new short and span? It is a concern in the secondary of the
TMI on reexamination and expungement proceedings. Let me
just digress for a moment to say
that. A decade ago, many of us were encouraged to file in
multiple classes, multiple items, and 10s of thousands of
dollars in filing fees. Later, we had to move at the speed of
light on small resources to create all the products to prove
use. Some real life examples would make a great study, a book
or a documentary. But now it's my understanding that anyone can
initiate either the expungement or reexamination proceeding even
if they have no legitimate interest in the registered
trademark. This can create a potential for abuse and can be
even more costly to legitimate trademark owners, especially
those who can least afford it.
Now, having said all that, I understand the need to
accomplish the goals in this new law that was drafted and passed
with bipartisan support as part of the Omnibus coronavirus
relief Bill. So here is 1
suggestion. Rather than attacking this just on the back
end might also be useful to put more effort on the front end
that is too extensively educate first time trademark applicants.
In short, easy to understand videos or even better in an open
online class about what they will need to do specifically and
simply to maintain their trademarks. I did search to find
this material and saw that there are now helpful long format
videos on the USPTO website.
An now on YouTube, but some studies show that shorter 6
to 8 minute YouTube videos tend to hold our attention
span better. Again, as you look at the implementation,
this is simply another tool to educate small business
owners. Trademark attorneys obviously know all this, but
we might have better outcomes all around, less
expensive and less frustration. If there was a
way to add additional resources on the front end.
I greatly appreciate your time and the opportunity to speak
with you today from Pittsbirgh. I've learned a lot on my own
intellectual property journey. Had some wonderful victories,
some Hard Knocks, and I usually don't speak out on issues like
this, however. I'm taking a cue from the late Supreme
Court Justice Ruth Bader Ginsburg, who quietly
suggested we should quote fight for the things that you
care about, but do it in a way that will lead others to join
you. I thank you so much and I feel this is a very important
topic.
Thank you so much for your comments an for the small
business perspective. We appreciate that.
I understand that the next two speakers on our list are not
online and we're still trying to connect. Angela Grayson.
Do we have Angela?
I see Angela Grayson is trying to connect will give
her a minute.
Hi this is Angela.
We can hear you great a little bit of drama today, but that's
par for the course, right?
Alright, thank you so much for the technical team working with
me to help resolve some of my technical difficulties and I
want to thank the USPTO for holding this form for
stakeholders to discuss. I like to really mostly share my
concern around this short and statutory response period, or as
you call it, the flexible response period. I'm also a
patent practitioner and so on. The pen side, we are certainly
used to what we call the.
Thus, the shortness statutory period for response. But I'd
like to echo some of the sentiments that Susan just
mentioned. And also I want to agree with Allison as well
with regard for possibly delaying this aspect of the
Modernization Act.
I primarily work with um.
Early stage companies in my practice at Precipice IP, I've
had also a fairly lengthy in-house IP counsel career, but
currently I spend my time working in counseling early
stage companies, and I do a lot of work in the Community to this
effect. I'm very concerned that the shorter period of response
can really make a lot of havoc with smaller businesses.
An anything less than than three months is is certainly not
doable in my opinion, although I understand the need to really
purge the the roles of bad actors and fraudulent
applications that are pending when you create an opportunity
for such a quick turn around time, I think can be very, very
very disruptive for smaller enterprises as Susan mentioned.
There also, there's going to also be more touch points from
an attorney perspective, so there's more of a docketing more
document events that will have to happen. These costs will
potentially get passed down to the client, will be more touch
points in terms of reaching out to the client to say hey, Are
you ready or no? I'm not ready. I'd like to get like to go for
an extension. I mean, it's just more and more legal fees.
Obviously if a client is not
prepared to. While his response within a short period of time,
he'll have to purchase more time, and that's more USPTO
fees I think. Just in the spirit of thinking about this from the
small business perspective and balancing wanting to purge
fraudulent applications with businesses like Susans and
businesses like the ones I support, I think this can really
have a very negative impact, at least in the short run. With
regard to these businesses.
Um? And I think that if the office is looking to implement
these rules must do what Allison said earlier, you know, since
there's not this mandate to do so within the 12 months, perhaps
this is something that might be pushed off a little bit into the
future to make way for some of these other higher priority and
statutory Lee necessary rulemaking. But also, you know,
maybe thinking about sort of the way. Maybe the patent side looks
at. Fees on the patent side fees are assessed based on the size
of the entity, so there's small. There's a micro and there's
large entity fees so that if you are going to impose a fee on an
applicant, for example, an extension of time, then perhaps
it could be based on the size of the entity, so that won't
necessarily negate the disruption, but it will
potentially negate how much you
know money. Small business will have to come out of pocket.
Thank you so much Angela. Appreciate your comments.
Thank you.
That is the list.
Of those who requested to speak and who are actually online. So
we've reached the end of our speaker list, and we have not
received any additional request to speak through our email box
today, so I think we'll move to closing remarks by Chief Judge
Rogers Jerry.
Thank you Amy. I'm not going to really say very much at all, but
I did want to kind of follow up on Erica Rose comment about the
default judgments, particularly when we have situations where
the cancellation petitioner has done their due diligence and has
reached the conclusion that they are very likely to get a default
judgment if they file for for cancellation based on non user
abandonment at the board.
And let me give you.
Some context and a little bit of explanation about how we came up
with these default judgment stats that I'm going to talk
about in a second.
Couple of years ago, after a round table discussion about all
the different things that we
could do. To safeguard the integrity of the register, one
of the things that was discussed was the possibility of creating
a expedited cancellation proceeding at the board that
would not require a statutory
change because. While we were lucky enough to have Congress
pay attention to trademarks and to pass the Trademark
Modernization Act, we didn't actually expect a few years ago
at that. Anything like that would happen. So the board
commenced a expedited cancellation pilot program.
After having a separate roundtable discussion with the
members of stakeholder groups
who express. Their opinions about how stuck to
proceeding might work best, so the cancellation pilot
was designed to kind of figure out what the best way
to expedite treatment of Nonuse abandonment claims
would be before the TTB, under its existing authority
to hear petitions to cancel under Section 14.
Now, one of the questions that came up during that discussion
was, well, what are the default breaks? And we didn't really
know and we can't easily mine that data from RIT systems. So
one of the things that we did focus on during the two year
pilot that ran from March 2018 to March 2020 was a labor
intensive examination of the types of claims filed in
cancellation cases. Which ones go by default?
And focusing on the nonuse or abandonment claim cases only. In
other words, the cancellation cases that involve only non user
abandonment and didn't go by way of default, then we try to
figure out what can we do to expedite handling of those cases
and get them resolved as quickly
as possible. However, in trying to identify those cases that
would present the best vehicles for an expedited cancellation
proceeding, we did find that the default rate in all
cancellations is 44%.
It is 49% when there is a non user abandonment claim and it is
60% when there is only an abandonment claim. So going back
to Erik Broes comment.
If you've done your due diligence and you've accurately
assessed the situation, you have a 6 in 10 chance by filing an
abandonment claim of getting a default judgment, so that can be
pretty quick. Now Eric mentioned that it might
take 90 to 120 days.
It's probably that's probably right, and one of the things we
do want to be careful of is safeguarding registrations that
have issued and not entering
DFU. Judgment too quickly. We do have the default judgment
process. Pretty well automated now, and it should be more and
more automated as we go forward. Given the assistance, the
growing insistence of the office to get email information and
correspondence information from filers and their attorneys, so
we might be able to squeeze a little bit more time out of
those default processing times.
But we're never going to squeeze much more than 90 speed down
much below 91120 days if we have to investigate means of possibly
serving the registrant. If we got an email or a snail Mail
returned as undeliverable.
Up this information on the expedited cancellation pilot I
come into. Everybody's review is up on the TTV website. If you go
to the TTS home page, there is a drop down menus, TTV, other news
and the one of the other news items in the drop down menu is
an explanation of the expedited cancellation pilot and the
results from that pilot.
And so you can. Look at that information on our website. I
will highlight a couple of things we covered about 200
cases or again, these are the ones that didn't go by default.
But only had a non use or abandonment claim. Now only 21
of those 205 cases actually had to go through what we have heard
referred to as a long and costly process for filing a petition to
cancel. So yes, certain cases, 10% in this instance that
involved an user abandonment claims went through a longer
process, but a great many of
them. Were resolved 134 of the 205 cases were terminated
without the need of a decision. A great many of them settled,
and so I think one of the things everyone has to keep in mind as
we move forward because there are so many unanswered questions
that we all have about how TMI will work in terms of the new
expungement reexamination
proceedings. And what?
Tool in a practitioners tool bag is going to be the best tool to
use in a particular
circumstance. A petition to cancel at the board. Not that
I'm asking for a lot more trial business at the board, but it
still may be something that will be a useful tool. Again, if
you've done your due diligence and you think you can get the
default judgment, but it also may be a useful tool in other
context if you have a section 18 situation where you are not
interested in deleting specific items that are listed in a
registration, but perhaps you are interested in.
Restricting channels of trade or classes of consumers are
crafting a limitation onto an ID that will make way for your mark
to get on the register. That might be something that you
still want to do in a petition to cancel. Of course, you also
have, as Amy mentioned earlier, the option of not limiting your
petition to just not use for abandonment claims, and you can
also consider bringing other claims. Perhaps that gives you
more leverage. Perhaps litigation makes you subject to
counterclaims. It all has to be evaluated in terms of figuring
out what the best tool in your toolkit is, but I didn't want to
bring this these options to everyone's attention and point
out that we do have this information about the expedited
cancellation pilot on our website for anyone to take a
look at. Before I go back to Amy to wrap up today's program,
I want to just clarify one thing I alluded to just a few moments
ago. I mentioned 21 cases out of the 205 cases in the expedited
cancellation pilot being tried on the merits. What I really
should have said was in 21 cases the parties agreed to some form
of ACR that would have resulted.
In potential trial of those cases on the merits. In fact,
half of those cases settled for the plaintiffs withdrew the
cases, so we didn't actually have 21 cases go through the
pilot an get decided on the
merits. Rather, we only had three cases going all the way
through the pilot and require final disposition on the merits
and at the end of the pilot, there were another nine cases
that were left in suspended status, so those might yet be
decided on the merits, but it's clearly a very very small
percentage of all cases that were in the pilot that were
tried on the merits or may yet be tried on the merits.
That's it for now. Thank you,
Amy. Thank you Jerry, and now I'm going to turn back to Tasha,
who opened our roundtable, and she's going to close this out
with some announcements, Tasha.
Thank you all for attending our roundtable today. If you have
additional comments on implementation of the TMA,
please email them to us at tmfeedback@uspto.gov. This round
table was recorded and the video along with today's slides will
be made available on our website within two to three weeks. We
will email all that signed up to attend today's roundtable. Once
the recording and slides are available. Thank you so much and
have a great rest of your day.