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USPTO issues final rules for the Trademark Modernization Act; some changes to begin in December

November 23, 2021

The U.S. Patent and Trademark Office (USPTO) issued its final rule regarding the implementation of the Trademark Modernization Act of 2020 (TMA) on November 17, 2021. Several significant changes resulting from this rule will begin to take effect this December, with additional changes being implemented by December 2022. Overall, these changes aim to help to improve the quality of the federal register and reduce the time it takes to examine trademarks.

Implementation of Expungement and Reexamination Proceedings

To combat the rise in fraudulent trademark registrations and declutter the federal register of marks not used in commerce, the USPTO is implementing two new ex parte proceedings (expungement and reexamination). These proceedings provide additional ways to challenge trademarks after their registration. If successful, the goods and services that are not in use are canceled from the registration.

Basis, Timing and Investigation Requirement

In an expungement proceeding, the USPTO will determine if the goods and services listed in the registration were never used in commerce. Petitions instituting an expungement proceeding can only be filed between 3 and 10 years after the date of registration. For the first three years after the implementation of the TMA, any trademark, regardless of the 10-year limit, is subject to expungement.

Reexamination proceedings also have time restrictions. They must be filed within the first 5 years of a trademark being registered. Reexamination proceedings challenge registrations based on whether the evidence supports a finding that the trademark was not used in commerce as of the applicant's filing date or amendment to allege use or before the deadline to file the statement of use.

Before instituting a proceeding, the petitioner must establish a prima facie case regarding the non-use of the trademark in question. While establishing a prima facie case does not require a private investigation, it requires more than a single search using a single search engine.

Additionally, the USPTO has not established a formal limit on the number of petitions that can be filed against a single trademark; however, if the use of the mark is established in a prior proceeding, the registrant cannot be subject to another proceeding for nonuse of the same goods and services.

Petition Requirements

Any petition for expungement or reexamination must be in writing and filed through the USPTO’s electronic filing system, TEAS. The petition must include:

  • The required fee of $400 per class;
  • The registration number of the trademark in question;
  • The name, address, and email of the petitioner,
    • If the petitioner is located outside of the US, they must be represented by a qualified attorney;
  • If an attorney represents the petitioner, the attorney’s information must also be provided;
  • The identification of the goods and services that are the subject of the petition; and
  • A signed statement by someone with firsthand knowledge of the facts regarding the,
    • Outcome and elements of the reasonable investigation, and
    • A concise, factual statement of the relevant facts.

If the USPTO determines that the petition is defective, the USPTO will give the petitioner 30 days to correct the deficiency.

While any third party may file petitions for expungements and reexaminations, attorneys can file the petition in their own name to keep the name of the real party private to help encourage the filing of legitimate petitions. That being said, the Director has the authority to require that the attorney disclose the client’s identity to prevent abusive filings. In addition to third parties, the Director of the USPTO has the authority to institute such proceedings should the Director discover relevant information.

New Ground for Cancellation 

In addition to ex parte expungement and reexamination proceedings, the TMA also created a new ground for petitioners to assert during cancellation proceedings. This new ground allows petitioners to allege that a registration was never used in commerce, but the ground is only available during the first three years of a trademark being registered.

Letters of Protest 

The TMA also provides statutory authority for third parties to submit evidence during the examination of a pending trademark application. Specifically, applicants can submit evidence that bears on the registrability of a particular trademark. Upon payment of a $50 fee and the submission of evidence, the Director will review the submission to determine if the evidence should be included in the record. This determination takes place within 2 months from the date the letter of protest was filed.

With a total fee of $50, submitting letters of protest will likely be a popular option for companies to submit evidence for the examiner to consider during the examination of their competitor's trademark or other trademark applications that are alleged to be "confusingly similar."  

Petitions to request a reexamination or expungement of a registered trademark will begin on December 27, 2021. Our trademark practitioners are here to help all clients navigate this new law and protect, enforce and defend trademarks pursuant to these amendments.

Flexible Time Periods for Office Action Responses

Finally, the new USPTO rules change procedure for filing responses to office actions.  Under the current system, applicants are given a 6-month window to file a response to an outstanding office action. If the applicant fails to respond within this 6-month window, then the application is abandoned.

When the new rule takes effect on December 1, 2022, applicants will be given an initial 3-month window to respond and will pay $125 for a one-time three-month extension to the full 6-month period. It should be noted that this flexible response time will not apply to international applications filed under Section 66(a).

Overall, the implementation of these new periods for responding will result in more applicants responding within the initial 3-month window to avoid the additional fees. This will result in increased efficiency and likely shorten the overall time for examining trademark applications.

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