The Trademark Modernization of 2020 (“TMA”) became law on December 27, 2020. The United States Patent and Trademark Office (“USPTO”) recently announced that many of the regulations implementing the TMA will go into effect on December 18, 2021.
These regulations will have an immediate impact on trademark clearance, prosecution and enforcement strategies, and are relevant to all trademark registrants and applicants. We address three of the changes most relevant to our clients and colleagues in this note.
First, the TMA has created a flexible response time for Office Actions. Starting on December 1, 2022, Applicants receiving a new Office Action will have just three months (as opposed to the current 6 months) to respond, with an option to request a 3-month extension of time for a $125 fee. (This change will not apply to applications under the Madrid Protocol – they will continue to have six months to respond to Office Actions.)
Second, in an effort to eliminate fraudulent applications and registrations for marks no longer in use, the USPTO is initiating two new ex parte cancellation proceedings. The first is an “Expungement Proceeding” which will allow anyone to request cancellation of an existing registration on the basis that the registrant never used the mark in connection with the goods/services. This type of proceeding can be requested between three and ten years after the registration date. The second is a “Reexamination Proceeding” which will allow anyone to request that a registration be cancelled because the mark was not used in commerce prior to the application filing date (or the statement of use filing date for an application filed based on intent-to-use).
These new proceedings should provide a more efficient and less expensive alternative to contested inter partes cancellation proceedings before the Trademark Trial and Appeal Board, and will help address the recent proliferation of bad faith and fraudulent registrations.
The fee to commence one of these proceedings will be $400 per class. If the USPTO determines that the petition contains sufficient evidence of non-use, the Director will issue an Office Action to the Registrant and no further participation from the original petitioner will be required. The Registrant will then have three months to respond to that Office Action (or can pay $125 to extend for an additional 3 months) before a final decision is made.
Third, the TMA is adding an additional ground for cancellation which can be asserted any time after the first three years of the registration date: that the registered trademark has never been used in commerce. Currently, there are just two bases for filing a cancellation proceeding: (i) abandonment without intent to resume use; and (ii) non-use for three consecutive years.
These changes will affect our clients in many ways. For example:
- For new applicants who are interested in a using a mark registered to a third party but no longer in use, there will be an expedited procedure to expunge that registration, clearing the path for registration of the intended mark.
- Foreign applicants who obtain registrations under the Madrid Protocol and Paris Convention for long lists of goods and services that are not used in the United States, might find that their registrations are the subject of expungement proceedings three years after the issuance of the registration. Foreign applicants might wish to file new applications for goods and services that are actually in use in the United States to avoid cancellation of their registrations.
- We and our clients will have to more quickly respond to office action responses, and can hope for a quicker path to registration.
We hope that the collective effect of these new regulations will be that applications proceed to registration more quickly, and that the register is purged of dead marks.
Please reach out if you have questions about these and other new regulations, and how they might apply to your trademark portfolio and strategy.