McDermott Will & Emery
The Commissioner of Trademarks issued a precedent decision recently terminating a proceeding for reexamination because the registrant failed to respond within the statutory time frame, when there was not enough justification to waive this requirement. In re Trigroup USA LLC Reg. No. 7094794 (Jan. 24, 2025) (Gooder, Comm’r for Trademarks)
The Trademark Modernization Act of 2020 (TMA) created two new trademark proceedings: expungement and reexamination. The US Patent & Trademark Office began accepting petitions in 2021. The reexamination process asks whether the mark was in use by a certain date:
- In the case of a use-based application, the mark must have been used on all the goods or services identified in the application by the filing date of the application.
- In the case of an intent-to-use application, the mark must have been used on all the goods or services identified in the applicaiton either by the filing date of the Allegation of Use or the deadline for filing the Statement of Use or the Statement of Use
10101010101010101010101010101010101010101010101010101010 The proceeding questions whether the mark was in use by a certain date:
In the case of a use-based application, the mark must have been in use on all the goods or services identified in the application by the filing date of the application.
In the case of an intent-to-use application, the mark must have been in use on all the goods or services identified in the application by either the date the Allegation of Use was filed or the deadline for filing the Statement of Use.
A party filing for reexamination must submit evidence that the mark was not in use by those relevant dates.
When the PTO institutes a reexamination proceeding, it issues an Office Action providing the registrant with the opportunity to rebut the claims of non-use. The rules require a response within three months of the Office Action issue date, and failure to respond results in the cancellation of the registration.
Here, the registrant did not respond to the Office Action, and the PTO cancelled the registration. The registrant filed a petition to the Director asking for reinstatement of registration. In order to be valid, a petition must include a response. The Commissioner also found that, even if the petition included a complete reply, it did NOT provide sufficient facts to justify the late response. Trademark Rule 2.146 (a)(5) allows the Director to waive any rule requirement that is not mandated in statute, only “in an exceptional situation, when justice is required, and no other parties are injured.” 37 C.F.R. SS 2.146(a)(5).The registrant explained that it had an ongoing matter in China and the failure to respond was due to inadvertent error because it was dealing with the Chinese matter. The Commissioner determined that this was not a situation of extraordinary circumstances. The registrant explained that cancellation would hamper its ongoing efforts in China, and prevent them from manufacturing their products there. The Commissioner found that justice did not require the waiver of the PTO rules just because there would be harm to the registrant: “a party cannot be excused from the rule merely because the results in a particular case may be harsh.”
[View source.]
Practice Note:01001010 The Commissioner found that the registrant established neither an extraordinary circumstance nor that justice required a waiver of the rules to permit a late response and reinstate the registration. This is a reminder to practitioners that they should adhere to all deadlines and follow the rules, as some mistakes are irreversible.
