December 10, 2021

New US Regulations implementing the Trademark Modernization Act introduced

The United States Patent and Trademark Office (USPTO) has confirmed that the new Regulations implementing the Trademark Modernization Act of 2020 (TMA) will enter into effect in the coming month, with the majority of the changes effective as of December 18, 2021.

Owing to the TMA, two brand new ex parte proceedings will be implemented from December 18, which are intended to facilitate a less expensive, and more efficient, alternative to contested inter partes cancellation proceedings at the Trademark Trial and Appeal Board (TTAB).

One option is that of expungement proceedings, whereby a party has the option to request the cancellation of either some, or all, goods or services covered by a registered mark if it is believed that said trademark was never used in commerce by the owner in relation to those goods or services. Proceedings of this nature should be requested between the period of 3 and 10 years following the date of registration, however until December 27, 2023, the same may be requested for any registered mark which is at least 3 years old, not taking the 10-year requirement into consideration.

A reexamination proceeding has also been introduced, whereby a party can request the cancellation of some, or all, goods or services relating to a registered mark on the grounds that the mark itself had not been used in commerce in relation to those goods or services on or before the relevant date. The relevant date is determined based upon whether the underlying application was filed based on the use of the mark in commerce, or filed with an intent-to-use basis. This procedure must be requested within the initial 5 years proceeding registration.

The TMA also amends and adds to already existing procedures. For example, once enforced, a new ground of expungement will be available for parties to request the cancellation of a registered trademark that has never been used in commerce through the TTAB. This option is available as a ground after 3 years have passed from the registration of the mark in question.

Another alteration to the Regulations enforces a shorter period of response time to Office Actions. This change requires applicants or registrants to respond to Office Actions issued during the examination process of a mark, or issued after the registration of a mark, within a 3-month period from the issue date. The implementation of the same will begin on December 1, 2022.

Those needing to respond to an Office Action once the 3 month limit has been enforced may request a single 3-month extension upon payment of a USD 125 fee. Applications will be abandoned or registrations cancelled or expired if the applicant or registrant does not comply with either the initial 3-month, or the extended, time limit.

The impending enforcement of the Regulations implementing the Trademark Modernization Act signifies a progression of advancement to the intellectual property legislation within the US. The alterations not only provide clarity regarding proceedings but expand upon options for all parties to eradicate unused registered marks.

Author: Danielle Carvey