Seattle Trademark Lawyer

Last March the U.S. Trademark Trial and Appeal Board rolled out a pilot program to expedite the cancellation of abandoned registrations. 

The U.S. Patent and Trademark Office’s administrative law arm now randomly selects over half of all cancellation petitions that allege abandonment or nonuse as a claim. Participation is voluntary, but if the parties opt in, they can get a decision in about 50 days. They also enjoy streamlined discovery and a decision on summary judgment-style briefs.

Here’s how the TTAB describes the program:

“Under the pilot, the TTAB identifies newly-filed cancellation proceedings limited to abandonment or nonuse claims that may benefit by some form of the Board’s existing Accelerated Case Resolution (ACR) procedures. The TTAB has an established practice of offering ACR in inter partes proceedings to simplify and speed up proceedings, allowing the parties to save time and expense. The standards of proof in an ACR proceeding remain the same as those in a traditional proceeding, and a final decision rendered under ACR may be appealed in the same manner and under the same time frames as non-ACR decisions.”

If the only issue is whether the registrant is not using the mark in the marketplace, the process should be easy, right? That’s the TTAB’s thinking, and it’s smart. The normal process to test whether a registrant is entitled to maintain its registration is often too cumbersome and expensive to be useful.

The standard for abandonment is three years of consecutive nonuse of a trademark, coupled with an intent not to resume use. If a company is out of business or its branded product has been permanently shelved, the trademark owner’s registration shouldn’t block others. It’s a zombie that should be quickly cancelled when attacked.

The high cost of the usual process drives abandoned claims to the sidelines. In the TTAB’s words, the overall default rate is “fairly high.” That’s my experience as well. While that’s not necessarily a bad thing, it would be better to have as many claims as possible decided on their merits. Making the cancellation process quicker and easier should help more parties to do so.