Tuesday, December 28 2021

USPTO Begins Implementing TM Modernization Act

by James Watson

USPTO regulations implementing two new procedures for challenging registered marks, as well as other provisions of the Trademark Modernization Act (TMA), went into effect on December 18, 2021. Generally, the new procedures enable streamlined challenges to registrations for non-use within certain timeframes. The USPTO began accepting petitions to institute the new challenge procedures on December 27, 2021.

 

The rules of use in the U.S. have not changed. Registrations have always been vulnerable to cancellation for non-use three years after registration. The new rules allow for different methods to challenge a registration. It’s important that owners of trademark registrations have a current address on file at the USPTO to ensure that any notices for these proceedings are received and can be addresssed.

 

Ex Parte Expungement

Under Section 16A of the TMA, anyone may petition the USPTO to expunge a registration in whole or in part when the mark has never been used with specified goods and/or services in the registration. The complaining party must provide evidence of a reasonable investigation showing that the registered mark has never been used with the identified goods/services.

 

A petition for expungement may be filed beginning three years after issuance of a registration (there will also be a ten-year limit on requesting expungement, but the limit does not go into effect until December 27, 2023). There is a fee of $400 USD per class when submitting a petition for expungement. The timing for this procedure renders registrations obtained through the Madrid Protocol and the Paris Convention particularly vulnerable to streamlined attacks for failure to use the mark in commerce in the U.S.

 

When a petition for expungement is granted, an examiner will issue an Office Action requiring a response with evidence of use, arguments and any evidence in support of an allegation of excusable nonuse, or deletion of goods/services for which use/excusable nonuse cannot be proved. The deadline to respond will be three months, and a one-month extension may be obtained for a $125 USD fee.

 

Ex Parte Re-examination

Under Section 16B of the TMA, anyone may petition the USPTO for re-examination of a registration in whole or in part when the mark has not been used with specified goods and/or services in the registration during a particular specified timeframe. For example, a petition for re-examination may allege that a registration based on use in commerce should be canceled because the mark had not been used for the claimed goods/services on or before the filing date of the application. As another example, a petition for re-examination may allege that a registrant had not used the mark with one or more goods/services as of the date alleged when filing a Statement of Use.

 

The complaining party must again provide evidence of a reasonable investigation showing that the registered mark had not been been used with the identified goods/services as of the identified date. A petition for ex parte re-examination must be filed within the first five years after issuance of a registration. There is a fee of $400 USD per class when submitting a petition for re-examination. While this proceeding most clearly targets fraudulently obtained registrations, it also renders registrations including innocent misstatements or misunderstandings about what is required for “use” in U.S. commerce vulnerable to attack.

 

When a petition for re-examination is granted, an examiner will issue an Office Action requiring a response with evidence of use or deleting goods/services for which use cannot be proved. The deadline to respond will be three months, and a one-month extension may be obtained for a $125 USD fee.

 

Other Issues

The recently issued regulations also add expungement as a ground that may be raised in a cancelation proceeding. They further provide that the deadline for responding to Office Actions will be shortened from six months to three months, with a three-month extension available for a $125 USD fee, though this will not take effect until December 1, 2022. In addition, the TMA formalizes the USPTO’s longstanding practice of permitting third parties to submit evidence relevant to a pending application to the USPTO via Letters of Protest.

 

Conclusion

Owners of U.S. trademark registrations, particularly those domiciled outside the U.S., should ensure that the contact information in the registration for them and for any appointed U.S. representatives is accurate to ensure that notices for the new challenges are received and can be addressed. Whenever a trademark owner makes an allegation of use, in a statement of use or in a renewal filing, the trademark owner should also be careful to ensure that the allegation accurately identifies the goods and services with which the mark is currently in use as well as the dates of first use, where applicable. Any goods and services with which the mark is not in use may be deleted from the registration and pursued in another application should the owner’s business in the U.S. expand. Finally, owners of U.S. trademark registrations should make efforts to use the mark in U.S. commerce with all goods and services in the registration that remain of interest as soon as practicable to reduce the risk that their registrations become vulnerable to these new attacks.