The first case of unilateral deletion proceedings in the United States
Time of ruling: June 27, 2022 Country Region: United States.
Case procedure: Exemptory Procedure – Unilateral revocation of a three-year non-use procedure.
Cancelled trademarks:
As we reported last year, the U.S. announced the Trademark Modernization Act of 2020, with the final rule implementation provisions effective December 18, 2021. The case I want to share today is the first case after the implementation of this Act, and the subject of the case is a Shenzhen company, which is not surprising, in recent years, Shenzhen e-commerce has seen a lot of amazing phenomena in the United States trademark registration.
Let's first take a look at the basic information of the trademark involved in this unilateral cancellation: Trademark registrant: Shenzhenshi Gebei Electronics Co,ltd.Date of Registration: 20187.10 Date of Initiation of Deletion Procedure: 202112.21 Registration Category: Class 27 Protected Goods:
coverings for existing floors; floor coverings; floor coverings made of pvc, rubber, plastic, textiles; floor coverings of rubber and synthetic rubber; floor coverings, namely, floor runners; flooring coverings made of drugget; anti-slip floor coverings for use on staircases; carpet tiles; carpet tiles for covering floors; carpets, rugs, mats and matting, linoleum for covering existing floors; cork for use as a floor or wall covering; decorative slip-resistant floor covering in sheet form; gymnasium floor coverings; gymnasium exercise mats; gymnastic mats; hard surface coverings for floors; protective floor coverings; resilient hard surface covering for floors, walls and other surfaces;vinyl floor coverings; floor coverings; floor coverings made of PVC, rubber, plastic, textiles; floor coverings of rubber and synthetic rubber; floor coverings, i.e. floor slides; floor coverings made of medicinal herbs; non-slip floor coverings for stairs; carpet tiles; carpet tiles covering the floor. carpets, rugs, floor mats and mats, linoleum for covering existing floors; cork used as a floor or wall covering; decorative non-slip floor coverings in the form of sheets; gymnasium floor coverings; gymnasium exercise mats; gymnastics mats; hard surface coverings for floors; protective floor coverings; elastic hard surface coverings for floors, walls, and other surfaces; Vinyl flooring coverings.
Evidence of trademark use:at least as early as 05 18 2017. 
In this case, the cancelled trademark was initiated by Gerben Perrott, PLLC (a U.S. company) in a unilateral deletion procedureAfter initiating the procedure, the trademark registrant did not submit valid evidence of use of the goods, which was taken as a deletion decision by the U.S. Bureau examiner in accordance with the law.
Procedure:
2021.12.21: Propose a unilateral deletion procedure.
2022.1.25: Revoke the notice of evidence supplementation, requiring the revocation person to provide a complete response to part of the evidence within 30 days.
2022.2.11: Request a reply from the trademark registrantSubmit evidence of useIn this case, the revocation is only directed against the trademark registrantThe evidence of use provided at the time of application was questionedand request that the registration on these products be revoked.
2022.3.14: Approved by the U.S. Bureau examinerGoogle and Amazon searched furtherThe GAL***a trademark is not used on all goods, and a second unilateral deletion reply notice is issued, requiring the trademark registrant to provide evidence of the use of all goods.
2022.6.27: During the three-month response period, the trademark registrant did not reply, and finally the examiner of the US Bureau issued a cancellation decision.
The above is the main content of this case, and the facts of the case are relatively simpleThe Act adds a new U.S. trademark ex parte expungement procedure and an ex parte reexamination procedure, which differ in the conditions for initiation.
U.S. Trademark Ex Parte Deletion ProcedureThe application must be filed less than 10 years after the completion of 3 years of registrationThis procedure and the revocation of the trademark for three years are not usedThe procedural conditions are the same, which is just the procedure for the withdrawal of the new billThe revocation person is not required to participate in subsequent proceedings after initiation, which can effectively reduce the cost of filing a trademark revocation.
U.S. Trademark Ex Parte Review ProcedureIt needs to be filed within 5 years of the trademark registrationEvidence of trademark use must be provided before an ex parte reexamination proceeding is initiated.
For applicants doing business in the United States, this new procedure is actually relatively friendly and can significantly reduce the cost of initiating trademark cases in the United States. The new U.S. Trademark Act is also aimed at cracking down on irregular filings, so it is important not to falsely create evidence of trademark use when registering a trademark in the United States, and at the same time, to use a valid trademark after trademark registration.
Important things to say three times:
U.S. trademark registration, do not falsify evidence of use.
U.S. trademark registration, do not falsify evidence of use. U.S. trademark registration, do not falsify evidence of use.
Anyone who understands understands that there are too many institutions in the market that teach applicants to falsify evidence of the use of U.S. trademarks, and for applicants who really want to operate in the U.S., they must not make a big mistake because of a small thing.