Trademark Modernization Act Takes Effect in Mid-December: What You Need To Know
Posted on Dec 7, 2021 in Articles
Regulations implementing the Trademark Modernization Act of 2020 (TMA) will officially take effect in mid-December, with the majority of provisions going into effect on December 18, 2021 and changes to office action response periods taking effect on December 1, 2022. The regulations will implement new procedures, as well as modify existing practices at the USPTO.
What is new?
The USPTO will introduce two new procedures to assist in clearing unused trademarks from the register: expungement proceedings and reexamination proceedings. These procedures are available for U.S. National registrations as well as those acquired under Madrid Protocol. Petitions for both proceedings will be accepted beginning December 27, 2021.
EXPUNGEMENT PROCEEDINGS permit a third party to request cancellation of some or all of the goods or services designated in a registration if the registrant has never used the trademark in commerce in connection with those goods and services. Until December 27, 2023, a proceeding can be requested no matter how old the registration is, as long as the registration is at least three years old. Starting December 27, 2023, proceedings may only be requested for registrations that are at least three years old, but no more than ten years old.
- Example: A registration for a mark issued on March 1, 2000 in International Class 25 for clothing but has never been used in commerce for clothing. A third party can request an expungement proceeding up until December 26, 2023, but cannot request one on December 27, 2023 or after.
- Example: A registration for a mark issued on September 1, 2017 in International Class 3 for cosmetics and International Class 25 for clothing. The mark has been used for cosmetics but never for clothing. A third party can request expungement of the registration for Class 3 any time until September 1, 2027, the ten year limit, but may not request one after.
- Example: A registration for a mark issued on November 1, 2020 in International Class 25 for clothing and International Class 3 for cosmetics. The mark has never been used for clothing or cosmetics. A third party cannot request expungement of the registration in both classes until the registration is at least three years old on November 1, 2023.
REEXAMINATION PROCEEDINGS permit a third party to request cancellation of some or all of the goods or services of a trademark or service mark registration on the basis that the mark was not in use in commerce by a certain required date. This date may be the date of first use stated in the application as filed, or, if the application was filed on an intent-to-use basis, the date is the later of 1) the date an amendment to allege use is filed or 2) the deadline to file a statement of use. This option is only available within the first five years after registration.
- Example: A registration issued on June 20, 2021 under Section 1(a) of the Lanham Act (use-based) in International Class 14 for jewelry. The stated date of first use is January 5, 2019. A third party discovers that no jewelry-related goods or services were being provided as of that date. The third party can request cancellation of the registration up until June 20, 2026.
- Example: A registration issued on July 1, 2021 under Section 1(b) of the Lanham Act (intent-to-use-based) in International Class 14 for jewelry and International Class 25 for clothing. An amendment to allege use was filed on March 7, 2021 in both classes, but a third party discovers the mark was only being used in commerce for clothing as of that date. The third party can request cancellation of the registration in Class 14 up until July 1, 2026.
- Example: A registration issued on January 2, 2015 under Section 1(a) in International Class 15 for musical instruments, with a date of first use listed as June 1, 2014. A third party discovers that there was no use in commerce regarding musical instruments as of that date. The third party cannot pursue a reexamination proceeding because the registration is more than 5 years old, but can pursue an expungement proceeding only if the mark was never used in commerce for musical instruments.
What has changed?
OFFICE ACTION RESPONSE DEADLINES will change, effective December 1, 2022. As of that date, applicants (excluding Madrid Section 66(a) applicants) and registrants will only have 3 months to respond to office actions during examination or post-registration. If a response is not possible within the 3-month deadline, one 3-month extension of time to respond may be requested during the initial 3 month period for $125. Otherwise, if the USPTO does not receive a response within 3 months, the application will be abandoned or the registration will be cancelled or will expire.
LETTERS OF PROTEST PRACTICE IS GRANTED STATUTORY AUTHORITY under the TMA on December 18, 2021, continuing the USPTO practice permitting third parties to submit pre-registration evidence to the USPTO that is relevant to a ground of refusal. Under the TMA, the USPTO has two months to respond to a letter of protest submission, and the Director’s decision on the letter of protest is final and non-reviewable. The USPTO will continue to charge a fee for letters of protest. As of November 30, 2021, the USPTO fee schedule set the letter of protest fee at $50.
ATTORNEY DESIGNATIONS that are mistaken, false, or fraudulent in an application or registration are considered ineffective. The USPTO will instead communicate directly with the applicant, and, effective on December 18, 2023, the designated attorney need not formally withdraw as counsel of record.
PROCEDURES CONCERNING COURT ORDERS ARE CODIFIED under the TMA as stated in Section 1610 of the Trademark Manual of Examining Procedure, giving the USPTO statutory authority to cancel marks or otherwise take action pursuant to a court order. To do so, the USPTO requires a certified copy of the order, and the decision normally must be final. A court decision is considered “final” if 1) the decision is on the merits, 2) a final judgment is entered, 3) no pertinent post-judgment motion under Federal Rule of Civil Procedure 59 (motion for new trail, motion altering or amending judgment) is filed, and 4) the time for appeal has expired.
What is next?
It is likely the USPTO will see an influx of expungement and reexamination proceedings, as attorneys will be surveying marks detrimental to their clients and checking on registrants’ use in commerce. While the TMA codifies many current practices, perhaps the biggest change for attorneys will be the office action response deadline change, as attorneys must now plan their dockets to respond in three months, rather than the usual six months.
For clients, shorter response deadlines may mean swifter examination periods and more expedient decisions on registration. However, the new regulations also mean that clients’ use in commerce will receive more scrutiny, and registrants who have received registrations for classes of goods or services that have no evidence of use are at risk to have their registrations canceled or expunged.
To learn more about acquiring a trademark or how the Trademark Modernization Act affects you, please visit https://www.caesar.law/practices/trademarks/.
