Photo:  Alachua County

Speeds trademark cancellations
For abandonment

Earlier this year, the US Patent and Trademark Office (USPTO) announced the launch of its Expedited Cancellation Pilot Program for trademarks.

This combines two current programs:  the regular trademark cancellation process, and the Accelerated Case Resolution (ACR) procedures.

In all cases, the processes are used to challenge the registration of marks on the ground that they’re not being used in commerce.

As the USPTO notes,

USPTO random audits suggested that over half of active registrations include some goods or services for which the registered mark is not actually being used. Registered trademarks that are not actually in use in commerce may block other trademark owners from registering their marks. Stakeholders have voiced interest in making challenges to such registrations faster and less burdensome than traditional full cancellation proceedings.

The traditional trademark cancellation process can be expensive and time-consuming, involving discovery, briefing, and a trial.

The ACR involves more streamlined versions of the above steps.

Under the Pilot Program, the Trademark Trial and Appeal Board (TTAB) will identify requests for trademark cancellations that may be eligible for an even faster resolution process. This will be discussed with the parties at the parties’ initial discovery conference.

It’s also possible to participate in the Pilot Program even if it wasn’t flagged by the TTAB. As the USPTO suggests,

You may participate in the pilot even if your case was not initially identified by the TTAB, and even if you already conducted your discovery conference. Coordinate with your opponent and call the Interlocutory Attorney assigned to schedule a conference.

Possible ways to expedite the process include stipulations as to facts and evidence. The parties may even decide that there’s no need for formal discovery.

If the parties agree to the ACR process, the TTAB will try to decide the matter within 50 days from when the case is ready for a final decision.

The goals of the pilot include measuring how willing parties are to participate in ACR and how effective the ACR is in expediting resolutions of challenges to trademark registrations.

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