What is a TMA petition based on trademark nonuse?

Third parties can now file petitions to remove some or all of the non-used goods or services in a trademark registration without going through the more expensive and lengthy process of a TTAB trademark cancellation. Under the Trademark Modernization Act (TMA), a petition may be filed for complete or partial cancellation of a trademark registration based on nonuse. For a reexamination petition, the nonuse of the registered trademark must have occurred at certain critical dates during the examination of the trademark application. Alternatively, a third party can file an expungement petition based on the allegation that the registration owner has never used the mark. The cost of a TMA trademark nonuse challenge will depend on certain key factors discussed below.

The TMA final rule can be found here.

What factors affect the cost of a TMA trademark nonuse challenge?

If you are considering a nonuse attack against a trademark registration, the cost of preparing a petition involves at least the following 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 $3,000 per class. With the USPTO petition fee of $400 added, the total cost of trademark nonuse petition will start at about $3,400 per class.

What subsequent costs may arise after filing a TMA nonuse petition?

TMA nonuse petitions are ex parte in nature, meaning that requestors do not participate in the proceedings. If 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.

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Vic Lin

Startup Patent Attorney | IP Lead Partner at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. Our registered patent attorneys work as a team to equip startups and founders with solid IP rights that facilitate funding, growth and sales. Email or call us so we can get to work on your IP: (949) 223-9623 | vlin@icaplaw.com