Implementation of the Trademark Modernization Act of 2020

January 6, 2022

By: John L. DuPré and Timothy J. Meagher

The Trademark Modernization Act (TMA) was enacted in December 2020. In November 2021, the United States Patent and Trademark Office (USPTO) issued regulations to implement the TMA. Among the provisions of the TMA are new procedures for partially or fully cancelling improperly issued registrations.

In enacting the TMA, Congress identified that the trademark register has been plagued by two problems: “cluttering” of the register with marks that are not currently used in commerce, creating a trademark “depletion problem,” and the filing of inaccurate and false claims of use in trademark applications and registrations that led to the issuance of registrations for trademark that should not have been issued in the first place. 

Prior to enactment of the TMA, cancellation of registered trademarks had only been available through an often time-consuming and expensive contested inter partes proceeding in which the Petitioner had to be a real party in interest. To remedy the problems identified by Congress, the TMA now provides for two streamlined ex parte proceedings to allow any party to cancel unused registered trademarks: expungement and reexamination. Petitions requesting institution of proceedings for expungement or reexamination will be accepted by the USPTO on or after December 27, 2021.

The ex parte expungement proceeding is available to request cancellation of some or all of the goods or services in a registration on the basis that the trademark was never in use in commerce with some or all of the goods or services set forth in that registration. This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration that is at least three years old, regardless of the ten-year limit.

The ex parte reexamination proceeding is available to request cancellation of some or all of the goods or services in a registration because, although the mark might have been in use at some time, the mark was not in use for the goods or services as of a statutorily required date for that application. Such dates include the filing date of an actual use application, the filing date of an amendment to allege use, or the deadline for filing a statement of use. This proceeding must be requested within five years of the registration date.

Trademark applicants who are considering challenging a trademark registration that is blocking their pending application may find that the new expungement and reexamination proceedings provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding. It should be noted that if the blocking registration is one that was properly issued, but has subsequently been abandoned, the new proceedings are not applicable, and a challenge to such a registration would need to be pursued under the existing inter partes cancellation proceeding rules.

Trademark registrants facing a challenge under either of the new proceedings should be sure to maintain accurate documentation with respect to use dates and specimens of use related to their registrations in order to be able to respond to any petitions and retain their registrations in force.

Another of the changes under the TMA will be a shorter response time with respect to office actions. This change is not effective until December 1, 2022. The current six-month response period will be replaced with a three-month response period, with the opportunity for the applicant to request a single three-month extension of time for a fee. The extension of time request will need to be filed before the end of the initial three-month response period. 

Overview

January 6, 2022

By: John L. DuPré and Timothy J. Meagher

The Trademark Modernization Act (TMA) was enacted in December 2020. In November 2021, the United States Patent and Trademark Office (USPTO) issued regulations to implement the TMA. Among the provisions of the TMA are new procedures for partially or fully cancelling improperly issued registrations.

In enacting the TMA, Congress identified that the trademark register has been plagued by two problems: “cluttering” of the register with marks that are not currently used in commerce, creating a trademark “depletion problem,” and the filing of inaccurate and false claims of use in trademark applications and registrations that led to the issuance of registrations for trademark that should not have been issued in the first place. 

Prior to enactment of the TMA, cancellation of registered trademarks had only been available through an often time-consuming and expensive contested inter partes proceeding in which the Petitioner had to be a real party in interest. To remedy the problems identified by Congress, the TMA now provides for two streamlined ex parte proceedings to allow any party to cancel unused registered trademarks: expungement and reexamination. Petitions requesting institution of proceedings for expungement or reexamination will be accepted by the USPTO on or after December 27, 2021.

The ex parte expungement proceeding is available to request cancellation of some or all of the goods or services in a registration on the basis that the trademark was never in use in commerce with some or all of the goods or services set forth in that registration. This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration that is at least three years old, regardless of the ten-year limit.

The ex parte reexamination proceeding is available to request cancellation of some or all of the goods or services in a registration because, although the mark might have been in use at some time, the mark was not in use for the goods or services as of a statutorily required date for that application. Such dates include the filing date of an actual use application, the filing date of an amendment to allege use, or the deadline for filing a statement of use. This proceeding must be requested within five years of the registration date.

Trademark applicants who are considering challenging a trademark registration that is blocking their pending application may find that the new expungement and reexamination proceedings provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding. It should be noted that if the blocking registration is one that was properly issued, but has subsequently been abandoned, the new proceedings are not applicable, and a challenge to such a registration would need to be pursued under the existing inter partes cancellation proceeding rules.

Trademark registrants facing a challenge under either of the new proceedings should be sure to maintain accurate documentation with respect to use dates and specimens of use related to their registrations in order to be able to respond to any petitions and retain their registrations in force.

Another of the changes under the TMA will be a shorter response time with respect to office actions. This change is not effective until December 1, 2022. The current six-month response period will be replaced with a three-month response period, with the opportunity for the applicant to request a single three-month extension of time for a fee. The extension of time request will need to be filed before the end of the initial three-month response period. 

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