Dealing with China Trademark Deadwood: Expungement and Reexamination Proceedings

Expungement and reexamination proceedings are new applications that brand names can use to get rid of trademark registrations blocking their individual U.S. trademark apps. This advancement does not influence China trademark applications, but will assistance corporations and the United States Patent and Trademark Business (USPTO) counteract the flood of fraudulent trademark applications by events from China. Extra generally, it will support makes, including people engaged in China business, superior guard their mental assets.

In the United States, trademark rights are intrinsically linked to use of the trademark in issue. You can style and design a interesting new logo for your brand, but if you are not really utilizing it on your items or in some public-dealing with way, the law is not interested in safeguarding your trademark. The very first line of the U.S. Trademark Act (identified as the Lanham Act) tends to make this very clear: “The owner of a trademark employed in commerce may perhaps ask for registration of its trademark.”

Demonstrating use of a trademark is a prerequisite for registration (although an software can be filed right before the trademark is utilised, on the foundation of an intent to use the trademark). Having said that, USPTO has limited sources to confirm the veracity of proof of use submitted by applicants and law enforcement ongoing use of a trademark. As a end result, the trademark register is full of “deadwood,” in the type of registered logos that are not becoming applied in commerce.

The Trademark Modernization Act (TMA) seeks to deal with this problem by empowering USPTO and 3rd functions to go immediately after deadwood. Expungement and reexamination proceedings let third parties to request that a trademark not applied in commerce be stricken off the sign-up. This in change will allow them to absolutely free up the trademarks that they want to use.

Trademark candidates can request USPTO to suspend their application pending the resolution of an expungement or reexamination proceeding. This is really practical in conditions in which USPTO provisionally rejects an application because of to a conflict with a confusingly comparable trademark. If that trademark is deadwood, the applicant can initiate an expungement or reexamination proceeding and, if effective, pick up where by they left off.

In scenario you are wanting to know about the change, in an expungement proceeding, the third occasion requests cancellation of a trademark on the foundation that it was never ever utilized in commerce. By distinction, in a reexamination continuing, the allegation is that the trademark was not in use at the time the software was filed (or, in the situation of an intent-to-use software, on the “relevant date”, as defined in the TMA).

At times, trademark deadwood is produced innocently. If a business fails, its trademark registrations might survive on autopilot for up to a 10 years. These unused logos are just a organic byproduct of capitalism’s innovative destruction.

There is however a far more pernicious source of dead wood. In a 2021 report, USPTO recognized a amount of non-marketplace variables driving “suspect” trademark apps from China, together with subsidies and govt mandates offered to Chinese businesses for intellectual home filings. In addition, bad religion actors these as squatters and counterfeiters use the trademark system to additional their activities. Expungement and reexamination proceedings might be the finest choice for brand names to offer with the pesky registrations that end result from these things to do.

To be honest, China is not the only source of deadwood. Some problematic registrations originate in other international locations, or even in the United States itself. Defensive registrations by authentic firms also incorporate to the problem. These companies may well sign up a trademark they have no intention of making use of just in scenario they improve tack in the long term, or to avoid their registration by a negative-faith actor. Offered the unchecked fraud out there, these defensive moves are comprehensible, but they are improper from a authorized point of view.

Expungement and reexamination proceedings are a novel growth, out there only considering that December 2021. Our agency filed one of the very initially petitions, effectively shifting USPTO to expunge a trademark that was blocking the registration of our client’s trademark. This circumstance had nothing to do with China, and the expunged trademark appears to be the harmless result of typical business action. Our achievement, however, demonstrates that expungement and reexamination proceedings are an successful weapon towards deadwood, harmless or not.