What is a TMA petition based on trademark nonuse?
When a competitor’s registered trademark is no longer being used, what are your options? Back in the day, you had file a TTAB trademark cancellation, which would result in an expensive and lengthy legal battle if the registration owner fought back. We now have options that cost less. You can file a petition to remove some or all of the non-used goods or services in a trademark registration. Generally, a TMA trademark nonuse challenge will cost much less than a cancellation. significantly depend on certain key factors discussed below.
Which trademark nonuse petition should you file?
Under the Trademark Modernization Act (TMA), a petition may be filed for complete or partial cancellation of a trademark registration based on nonuse. The facts will dictate whether a reexamination or expungement is appropriate.
For a reexamination petition, nonuse of the mark must have occurred at certain critical dates during the examination of the trademark application. An expungement petition would be appropriate if the registration owner has never used the mark.
What factors affect the cost of a trademark nonuse filing?
The cost of attaching a trademark registration based on nonuse will depend on key factors. In particular, the amount of time to investigate the nonuse and set forth the evidence will largely drive the cost. Here are the factors:
- reasonable investigation into the alleged nonuse of the trademark to find multiple pieces of evidence;
- drafting of the trademark nonuse petition; and
- USPTO petition fee: $400 per class.
Depending upon the number of goods or services in a particular registration, our firm’s fees for the investigation and drafting of a petition start at around $4,000 per class. With the USPTO petition fee of $400 added, the total cost of trademark nonuse petition will start at about $4,400 per class.
What subsequent costs may arise after filing a TMA nonuse petition?
TMA nonuse petitions are ex parte in nature. This means that you, as the petitioner, do not participate in the proceedings. If the USPTO grants a nonuse petition and institutes an expungement or reexamination proceeding, the nonuse proceeding is conducted between the registration owner and the USPTO. Ongoing costs for the requestor after filing a nonuse petition will depend on how much effort is desired in tracking the developments of the challenged trademark registration.
Registrants should expect legal costs if they choose to respond to an Office Action issued as a result of a granted nonuse petition. A TMA Office Action response will likely involve gathering and submitting evidence of use for the particular goods or services being challenged.
What is the cost of canceling a registered trademark that was used and abandoned?
Since expungement applies only to trademark registrations that have never been used, third parties may not use expungement for registered marks which were previously used, but have since been abandoned. The old-fashioned TTAB trademark cancellation, with its higher costs, would typically be the appropriate proceeding to consider under such circumstances.
Even with a registered trademark that was used and then abandoned, however, a reexamination proceeding might be available if you can determine that usage was falsely declared at the filing date of a use-based application or at the filing date of a Statement of Use in an Intent-To-Use application.
Need to cancel a registered trademark?
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