The Trademarks Opposition Board has now issued all of its decisions for the six month period from January to June 2019, and we have reviewed these decisions to determine whether there are any trends or useful practice points which can be gleaned from these decisions.
Beginning with the decisions in Section 45 non-use cancellation matters, the Board released 35 decisions in the first six months of this year, as compared to 82 Section 45 decisions which were decided by the Board in all of 2018, meaning that the Board is roughly on course to decide the same volume of cases in both years.
Contested Section 45 proceedings can result in a decision to maintain the registration, to expunge the registration on the basis of non-use, or to maintain the registration for some goods or services and delete other goods or services from the registration. The outcomes in the first half of 2019 show a virtually identical ratio of potential outcomes to the Board’s decisions in 2018, with decisions to expunge, decisions to maintain and partial decisions being equally common.
Following the filing of evidence of use by the registrant, both parties in turn have the opportunity to file written representations. Both parties filed written representations in nearly 60% of all of the contested proceedings, as contrasted with the situation in 2018, in which it was much more common for the registrant alone to file written written representations. In the cases decided in 2019 to date, the registrant was the sole party filing written representations in only one case, and in that case, the registrant was successful in maintaining the registration. Also in 2019, there were more cases in which the requesting party alone filed written representations, and in those cases, the registration was maintained only 20% of the time.
Turning next to attendance at oral hearings before the Trademarks Opposition Board, in almost 70% of all contested section 45 proceedings, neither party requested an oral hearing. There were no cases in which the registrant alone attended an oral hearing. There were an equal number of cases in which either both parties or the requesting party alone attended an oral hearing. There were only two cases where the requesting party alone attended a hearing and in which the registration was maintained, and there was only one case where both parties attended an oral hearing in which the registration was maintained.
The registrant was not represented by a trademark agent in only three of the decided cases this year to date. In two out of those three cases, the registration in question was expunged.
With respect to the length of Section 45 proceedings, the shortest turnaround time from the date of the issuance of a Section 45 notice up to the date of the decision was 18 months. However, the vast majority of the cases took between 20 and 30 months, and in 20% of the decided cases, the length of time of the proceedings was between 30 and 40 months.
The key lesson gleaned from a review of the 35 Section 45 proceedings decided in the first half of 2019 remains the same as it was in the 2018 decisions. As long as some evidence of use is filed by the registrant, there are twice as many cases in which the registration is maintained, at least in part. It is valuable for a requesting party to file written representations and attend a hearing in order to increase the chances of a successful outcome.