Dealing with China Trademark Deadwood: Expungement and Reexamination Proceedings

Expungement and reexamination proceedings are new instruments that brand names can use to get rid of trademark registrations blocking their individual U.S. trademark purposes. This development does not effect China trademark applications, but will help firms and the United States Patent and Trademark Workplace (USPTO) counteract the flood of fraudulent trademark programs by parties from China. A lot more typically, it will help makes, which includes those people engaged in China business enterprise, superior shield their intellectual house.

In the United States, trademark rights are intrinsically connected to use of the trademark in question. You can style a awesome new symbol for your manufacturer, but if you are not really making use of it on your products and solutions or in some general public-experiencing way, the legislation is not fascinated in shielding your trademark. The quite very first line of the U.S. Trademark Act (recognised as the Lanham Act) tends to make this very clear: “The owner of a trademark utilised in commerce may possibly request registration of its trademark.”

Demonstrating use of a trademark is a prerequisite for registration (however an application can be filed in advance of the trademark is utilized, on the basis of an intent to use the trademark). On the other hand, USPTO has confined methods to affirm the veracity of proof of use submitted by candidates and law enforcement ongoing use of a trademark. As a outcome, the trademark sign up is complete of “deadwood,” in the type of registered trademarks that are not staying utilized in commerce.

The Trademark Modernization Act (TMA) seeks to deal with this dilemma by empowering USPTO and third functions to go after deadwood. Expungement and reexamination proceedings permit 3rd get-togethers to request that a trademark not utilized in commerce be stricken off the register. This in change will allow them to free up the logos that they want to use.

Trademark applicants can request USPTO to suspend their application pending the resolution of an expungement or reexamination continuing. This is quite 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 continuing and, if thriving, choose up wherever they left off.

In situation you are thinking about the difference, in an expungement proceeding, the third get together requests cancellation of a trademark on the foundation that it was in no way used in commerce. By contrast, in a reexamination proceeding, the allegation is that the trademark was not in use at the time the application was filed (or, in the circumstance of an intent-to-use software, on the “relevant date”, as defined in the TMA).

Occasionally, trademark deadwood is generated innocently. If a small business fails, its trademark registrations might survive on autopilot for up to a 10 years. These unused trademarks are just a pure byproduct of capitalism’s innovative destruction.

There is even so a more pernicious supply of dead wooden. In a 2021 report, USPTO determined a quantity of non-market variables driving “suspect” trademark programs from China, which includes subsidies and govt mandates provided to Chinese corporations for mental house filings. In addition, terrible religion actors these types of as squatters and counterfeiters use the trademark program to additional their actions. Expungement and reexamination proceedings could be the greatest option for manufacturers to offer with the pesky registrations that end result from these functions.

To be fair, China is not the only source of deadwood. Some problematic registrations originate in other nations, or even in the United States itself. Defensive registrations by authentic companies also insert to the difficulty. These providers may perhaps sign-up a trademark they have no intention of employing just in circumstance they modify tack in the long term, or to stop their registration by a undesirable-faith actor. Given the unchecked fraud out there, these defensive moves are understandable, but they are poor from a legal standpoint.

Expungement and reexamination proceedings are a novel growth, accessible only considering the fact that December 2021. Our business submitted one of the pretty initially petitions, effectively transferring USPTO to expunge a trademark that was blocking the registration of our client’s trademark. This circumstance experienced almost nothing to do with China, and the expunged trademark appears to be the innocent outcome of ordinary business activity. Our achievements, on the other hand, demonstrates that expungement and reexamination proceedings are an efficient weapon towards deadwood, harmless or not.