USPTO Taking Steps to Implement Provisions of the Trademark Modernization Act of 2020

By: Jeremy Stroh, Partner

The United States Patent and Trademark Office (USPTO) has recently proposed several changes to the Trademark rules of practice in an effort to implement the Trademark Modernization Act (TMA), which was enacted on December 27, 2020. Many of the changes are directed to providing new avenues for interested parties to clear away registered marks which are not being used by owners of the marks. Additionally, some of the proposed rule changes are directed to speeding up prosecution of trademark applications in an effort to improve efficiency.

On May 18, 2021, the USPTO published a notice of proposed rulemaking which details the proposed rule changes. Some of the rule changes are scheduled to take effect in December 2021, while others are not set to take effect until June 2022. The USPTO recently held two virtual round table discussions in June to offer more guidance regarding the proposed rule changes. Interested stakeholders have 60 days from the May 18^th publication date to submit comments on the proposed changes.

A brief discussion of the significant proposed changes to the Trademark rules of practice is presented below.

            New Nonuse Cancellation Mechanisms

One of the goals of the TMA was to ensure that registered trademarks are actually in use, so that legitimate businesses can clear and register their own marks. In an effort to achieve this goal the TMA created two new ex parte proceedings – one for expungement and one for reexamination. These new proceedings are intended to provide a more efficient method compared to a contested inter partes cancellation proceeding before the Trademark Trial and Appeal Board (TTAB).

An expungement proceeding allows a party to request cancellation of some or all of the goods or services because the registrant never used the trademark in commerce, while the reexamination proceeding allows a party to request cancellation of some or all of the goods or services based on an allegation that the mark was not in use in commerce on or before a particular relevant date.

The proposed rules specify the timelines that a petition can be filed to request institution of an expungement or reexamination proceeding, set a proposed petition fee (e.g., $600), and outline other requirements for the petition to be accepted, such as the submission of a verified statement that a “reasonable investigation” was conducted by the petitioner to determine that the mark was not used in commerce.

If the proceeding is instituted by the USPTO, the registrant will be notified through an Office Action and will be required to provide evidence of use to avoid cancellation of the registration.

Finally, the TMA also created a new nonuse ground for cancellation of a registration by allowing a petitioner to allege a mark has never been used in commerce as a basis for cancellation before the TTAB. The USPTO proposes amending the rules to indicate the timing for presenting this ground for cancellation, which is any time after the first three years from the registration date.

            Flexible Office Action Response Periods

Under current practice, applicants have six months to respond to Office Actions issued during examination of a trademark application. The TMA granted the USPTO the authority to be flexible with respect to the timelines for responding to Office Actions.

Accordingly, as a first option the USPTO is proposing to change the response period to 3 months for responding to Office Actions with the ability to request a single three-month extension with payment of a fee (e.g., $125). The USPTO is also proposing to enact similar response periods for responding to post-registration reviews of registration maintenance and renewal filings. One exception to the proposed changes to the Office Action response periods, are trademarks filed under the Madrid Protocol (Section 66(a) filings), which will continue to have response periods of six months due to the additional processing times required for those applications.

            Other Miscellaneous Changes

Other changes proposed by the USPTO include: (1) enacting rules expressly allowing for the USPTO to consider letters of protest from third-parties presenting evidence bearing on the registerability of a mark, and (2) changes to how the USPTO recognizes attorney representation of applicants and registrants.

            Conclusion

At this time the USPTO’s proposed changes are still being evaluated and a “final” rule will not become effective until after considering comments from the public. After such consideration, the final rule implementing the proposed changes is expected to go into effect by December 27, 2021 (except as to the flexible Office Action response period, which is proposed to go into effect in June 2022, due to the significant changes involved in changing the response period).

In the meantime, trademark owners and applicants should be sure to monitor the USPTO’s implementation of the TMA as many changes are coming to the Trademark rules of practice.