How to Expedite Trademark Cancellation for Nonuse or Abandonment
The Trademark Trial and Appeal Board (the "Board" or "TTAB") is making a concerted effort to clean up the Trademark Register of marks no longer in use in commerce. See our blog post entitled, The USPTO's Efforts To Improve Accuracy Of The Trademark Register, for more on this topic. As a means to an end, the Board has established a pilot program (the "Expedited Cancellation Proceedings") to shorten proceedings if the only grounds alleged are nonuse or abandonment. Of course, many of these types of cases may be resolved in advance of the TTAB identifying it for expedited proceedings. If an Answer is not filed in response to a Cancellation Petition for nonuse, there will be a default judgment and cancellation of the challenged registration. This typically occurs within 5-6 months from the filed Petition for Cancellation. However, if an Answer is filed in response to a Petition which has only asserted the grounds of nonuse or abandonment, it's likely the case will be selected for an accelerated proceeding.
In theory, this appears to be a useful mechanism for a Petitioner who is seeking cancellation based on nonuse or abandonment. As of March 2018, the TTAB sought to identify newly filed cancellation proceedings limited to nonuse or abandonment grounds. If the case is selected for the pilot program then at the discovery conference, there will be an Interlocutory Attorney and an Administrative Judge that participates. The conference will explore all the typical subjects and in addition, will determine if the parties can stipulate to certain facts and evidence, explore ways to limit discovery, and possibly agree on using the "summary judgment ACR" model. The summary judgment ACR model allows the Board to treat the motion as the final record and will determine factual matters in dispute.
The Petitioner should seek total cancellation of the registration, if all of the goods and services are not in use in commerce. If only some of the goods and services have been abandoned, then the Petitioner should seek a partial cancellation. If your cancellation proceeding is not selected for the pilot program, and if you and opposing counsel can agree on an expedited proceeding, you may contact the Interlocutory Attorney to make a request. The USPTO anticipates that these proceedings will be shortened to approximately 9-11 months long, instead of an 18-month or longer trial schedule.
To prevail in a Cancellation Proceeding based on abandonment, the Petitioner must establish "standing" to challenge the subject registration. See our web page entitled, Filing An Opposition Or Cancellation Proceeding, where "standing" is discussed, or our web page entitled, The Standing Requirement For Oppositions And Cancellation Proceedings for more on the topic. In addition, the Petitioner must prove a prima facie case of abandonment by a preponderance of the evidence. Petitioner is required to prove that the registrant discontinued use of the trademark with the goods or services identified in the registration with intent not to resume use. If the Petitioner cannot make this showing, in the alternative Petitioner has the opportunity to make a prima facie case by demonstrating three consecutive years of nonuse of the mark in commerce. If a prima facie case is proven, the burden shifts to the registrant to show use of the mark in commerce during the three-year period OR intent to resume use through justifiable nonuse.
If the Petitioner cannot show three consecutive years of nonuse, this places the Petitioner in a difficult position of having to prove a negative (abandonment through nonuse). This is exactly what happened in TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, Cancellation No. 92068042 (December 7, 2018) [precedential]. The Petitioner's case was selected for the pilot program. The parties agreed to exchange initial disclosures but to forego typical discovery. Unfortunately, it appears that the Petitioner needed discovery to meet its burden and prove its case. The Board held that the Petitioner failed to establish a prima facie case on nonuse, and dismissed the Petition for Cancellation. As I referenced above, in theory the Expedited Cancellation Proceedings seem helpful, but TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, presents a discouraging reality to Petitioners. Without incredibly strong evidence, limited discovery may present insurmountable obstacles for meeting one's burden of proof on abandonment. If you have questions, regarding nonuse or abandonment, please contact the firm for a courtesy consultation.