Trademark Modernization Act implementation by USPTO

By James Juo.

New trademark regulations of the U.S. Patent and Trademark Office (“USPTO”) to implement the provisions of the Trademark Modernization Act (TMA) of 2020 have been published in the Federal Register. Most of the revisions to the trademark rules will take effect on December 18, 2021, but implementation of a shorter three-month response period for office actions will go into effect next year on December 1, 2022.

Specifically, starting next December, trademark applicants (excluding Madrid Section 66(a) applicants) will have to respond within three months to office actions issued during examination or post-registration, instead of the current six-month period. A single three-month extension of time to respond may be obtained for a fee of $125. If the extension request or response is not received by the USPTO within the first three months, the application will be abandoned or the registration will be cancelled or expire. This shorter response period will not be implemented until December 1, 2022, while the USPTO modifies its information technology systems to implement this shortened statutory period and extension of time process.

The TMA also provides two new ex parte proceedings (“Expungement” and “Reexamination”) against registered trademarks that are intended to provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB).

The new ex parte Expungement proceeding may be requested by any party who files a petition to cancel some or all of the goods or services in a registration where the registrant never used the trademark in commerce with those goods or services.  “Use in commerce” must be a bona fide use of the mark in the ordinary course of trade, and not use simply made to reserve rights in the mark. This new Expungement 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 at least three years old, regardless of the ten-year limit.

Expungement of a registered trademark three-years-old or older that has never been used in commerce also has been added as a new ground for inter partes cancellation proceedings. The existing grounds for cancellation of nonuse and abandonment are unaffected by this new expungement ground for cancellation.

The new ex parte Reexamination proceeding may be requested by any party who files a petition to cancel some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date.

  • When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.
  • When the underlying application was filed with an intent-to-use basis, the relevant date is the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

This new Reexamination procedure must be requested within the first five years after registration.

The final rules include provisions for estoppel, for barring co-pending proceedings that involve the same registration and the same goods or services, and for authorizing suspension of action by the USPTO or the TTAB based on an expungement or reexamination proceeding. The estoppel provisions prevent institution of any future proceedings against the goods and services in a registration that have been the subject of a previous proceeding and where acceptable proof of use was provided.

The TMA is intended to give the USPTO additional tools to clear away unused registered trademarks from the federal trademark register, and to move applications through the registration process more efficiently.

The existing grounds for cancellation of nonuse and abandonment are unaffected by this new expungement ground for cancellation.

The trademark attorneys at Thomas P. Howard, LLC are experienced at prosecuting trademark applications before the USPTO, as well as enforcing trademarks or defending against infringement claims in litigation nationwide including in Colorado.