USPTO Finalizes Enforcement Rules for Trademark Modernization Law | Perkins Coie


When Congress passed the Trademark Modernization Act of 2020 (TMA) on December 18, 2020, giving the US Patent and Trademark Office (USPTO) and trademark owners additional tools to reduce clutter and improve the integrity of the US Trademark Registry, it imposed a one-year deadline for the USPTO to develop procedures and implement certain changes enacted in the new law. In November, the USPTO published its final regulations in the Federal Register, signaling that the office is ready to meet the congressional deadline and implement the changes, most of which will take effect on December 18, 2021.[1] Following the publication of draft USPTO Rules on TMA Provisions in May 2021, the USPTO received public comments from interested parties. The final rules clarify the procedures and, most importantly, the new time limits within which trademark owners will be required to respond to the new non-use procedure and to respond to the actions of the office in the course of the substantive examination. .

The TMA introduced two new administrative procedures to clear unused Federal Register trademark registrations, expungement and review, but left the procedures and timing for trademark owners’ responses to the USPTO. The TMA also added expungement for non-use as a ground for canceling a registration with the Trademark Trial and Appeal Board (TTAB). Additionally, the TMA allowed the USPTO to set flexible response times, between 60 days and six months, with extension options, and asked the USPTO to update its protest letter procedures. The following update focuses on the finalized changes to the Code of Federal Regulations that are due to be implemented and available on December 18, 2021. Overall, the new regulations will allow trademark owners and the USPTO to clear unused trademarks and will give the USPTO the ability to more efficiently move applications through the registration process.

New procedure: striking off and reconsideration

The TMA introduces two new methods for contesting and canceling non-use registrations: expungement and reconsideration.

  • Cancellation proceedings contest a registration on the ground that the registrant has never used the trademark in connection with all or part of the goods and services of the registration. De-listing procedures are only available between three and ten years after registration problems have occurred.[2]
  • The review proceedings ask the USPTO to go back and reconsider claims regarding use of the trademark filed during the application process. For applications filed on the basis of use, the relevant date will be the filing date of the application. For intent-to-use requests, the relevant date is the deadline for filing the declaration of use (or the date for filing an amendment to a use claim, if the request was converted before the authorisation). Review procedures are available until the fifth anniversary of registration.

Erasure and review proceedings begin with a petition to the Director of the USPTO containing (1) a verified statement establishing that a reasonable investigation has been conducted and containing a concise statement of the basis for the petition, (2) evidence supporting the prima facie case of non-use, and (3) a fee of $ 400 per class requested to be canceled. It is important to note that once the USPTO initiates expungement or reconsideration proceedings, the USPTO Final Rules state that trademark owners must respond with proof of use within three months, with a one month extension available for a fee of $ 125. The final rules also state that the USPTO will not require a motion for expungement or reconsideration to identify the genuine interested party, but gives the Director the discretion to request the identification of the genuine interested party in individual cases.

New grounds for cancellation with TTAB: cancellation

Apart from the new requests for expungement and reconsideration to the Director, the TMA creates a new cause of action inter partes which allows a registration to be challenged on the ground that the mark has never been used in American commerce in connection with all or part of the goods and services. This new de-listing application requires establishing that the mark has never been used commercially in the United States, but, unlike traditional abandonment procedures, it does not require establishing that the proprietor has not. no intention of resuming use of the mark. De-listing procedures become available three years after registration, and registrations do not become immune to this challenge after ten years.

New three-month shorter response times for office actions

As of December 1, 2022, applicants (excluding applications filed under the Madrid Protocol) will have three months to respond to an action by the office, with a single three-month extension available at a cost of $ 125. , rather than the six-month period which has long been applicable in American practice. Applications filed under the Madrid Protocol will continue to benefit from a six-month response period.

The decisions of the protest letter must be issued within two months

The TMA provides express legal authority for the existing USPTO protest letter procedure, requires that director’s protest letter decisions be issued within two months of filing, and establishes that any director’s decision will be final and not revisable. Protest letters are submitted to the Director to alert the USPTO of evidence that a trademark application should not be registered. The director decides whether to submit the evidence contained in a protest letter to the examining lawyer. The USPTO has now set a requirement in the final rules that the director be required to determine within two months whether a protest letter contains relevant evidence for a review.

End Notes

[1] 86 Fed. Reg. 64,300 to 64,334 (November 17, 2021).

[2] Until December 27, 2023, a cancellation procedure can be requested for any registration of more than three years.

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