Dealing with China Trademark Deadwood: Expungement and Reexamination Proceedings

Expungement and reexamination proceedings are new tools that brand names can use to get rid of trademark registrations blocking their own U.S. trademark applications. This progress does not impression China trademark programs, but will help organizations and the United States Patent and Trademark Business office (USPTO) counteract the flood of fraudulent trademark purposes by events from China. Additional usually, it will assistance makes, together with those engaged in China organization, far better shield their intellectual home.

In the United States, trademark legal rights are intrinsically linked to use of the trademark in issue. You can structure a cool new brand for your manufacturer, but if you are not truly utilizing it on your merchandise or in some community-facing way, the law is not fascinated in preserving your trademark. The pretty to start with line of the U.S. Trademark Act (acknowledged as the Lanham Act) makes this distinct: “The operator of a trademark applied in commerce may perhaps ask for registration of its trademark.”

Demonstrating use of a trademark is a prerequisite for registration (though an application can be filed prior to the trademark is applied, on the basis of an intent to use the trademark). Nevertheless, USPTO has minimal means to validate the veracity of proof of use submitted by applicants and law enforcement ongoing use of a trademark. As a final result, the trademark register is comprehensive of “deadwood,” in the kind of registered trademarks that are not staying applied in commerce.

The Trademark Modernization Act (TMA) seeks to offer with this challenge by empowering USPTO and 3rd parties to go following deadwood. Expungement and reexamination proceedings enable third events to request that a trademark not utilised in commerce be stricken off the sign up. This in flip will allow them to absolutely free up the logos that they want to use.

Trademark applicants can inquire USPTO to suspend their software pending the resolution of an expungement or reexamination proceeding. This is quite helpful in conditions in which USPTO provisionally rejects an software due to a conflict with a confusingly very similar trademark. If that trademark is deadwood, the applicant can initiate an expungement or reexamination continuing and, if profitable, select up in which they still left off.

In case you are wanting to know about the difference, in an expungement continuing, the third bash requests cancellation of a trademark on the foundation that it was never employed in commerce. By contrast, in a reexamination continuing, the allegation is that the trademark was not in use at the time the software was filed (or, in the circumstance of an intent-to-use software, on the “relevant date”, as described in the TMA).

From time to time, trademark deadwood is generated innocently. If a company fails, its trademark registrations may well endure on autopilot for up to a ten years. These unused trademarks are just a all-natural byproduct of capitalism’s resourceful destruction.

There is nevertheless a a lot more pernicious resource of useless wooden. In a 2021 report, USPTO recognized a selection of non-market variables driving “suspect” trademark applications from China, such as subsidies and authorities mandates given to Chinese companies for mental home filings. In addition, terrible faith actors this kind of as squatters and counterfeiters use the trademark process to additional their pursuits. Expungement and reexamination proceedings may possibly be the finest selection for brands to offer with the pesky registrations that consequence from these activities.

To be reasonable, China is not the only resource of deadwood. Some problematic registrations originate in other international locations, or even in the United States alone. Defensive registrations by genuine corporations also incorporate to the dilemma. These organizations might register a trademark they have no intention of working with just in situation they change tack in the long term, or to prevent their registration by a undesirable-religion actor. Provided the unchecked fraud out there, these defensive moves are understandable, but they are improper from a authorized viewpoint.

Expungement and reexamination proceedings are a novel enhancement, accessible only due to the fact December 2021. Our agency submitted one of the pretty initially petitions, correctly transferring USPTO to expunge a trademark that was blocking the registration of our client’s trademark. This case had almost nothing to do with China, and the expunged trademark seems to be the innocent outcome of ordinary organization action. Our good results, nevertheless, demonstrates that expungement and reexamination proceedings are an productive weapon from deadwood, harmless or not.