The Trademark Modernization Act (the “TMA”), which must be fully implemented by December 27, 2021, amends the Lanham Act (the U.S. Trademark Act). The TMA’s primary objective is to address the overcrowding of the trademark register by making it easier for individuals and companies to challenge pending applications and existing registrations on the basis of non-use or fraud. To achieve this, the U.S. Patent and Trademark Office (USPTO) has implemented new proceedings and has changed existing procedures, some of which will go into effect on December 18, 2021 (with exception to the changes to Office Action deadlines discussed below). Saunders & Silverstein has been monitoring the passage and implementation of the TMA in order to provide recommendations on how to employ the new procedures introduced by the TMA and advise on strategies to ensure our clients’ trademarks remain resistant to new avenues of attack. What does this mean for our clients? The TMA provides new avenues to remove obstacles that may be identified during the trademark search and clearance process or encountered during examination of a new U.S. trademark application. Access to these new procedures will make the registration process more efficient by providing new means to combat fraud and non-use. At the same time, trademark owners must exercise more diligence in documenting and memorializing use of their trademarks in U.S. commerce on each and every item listed in an application or registration to avoid third-party challenges.
New USPTO Proceedings The TMA implements two new types of USPTO proceedings: expungement and re-examination.
Expungement proceedings allow a party to petition the USPTO to remove trademark registrations from the trademark register (in part or in whole) where goods or services listed in a registration have never been used in U.S. commerce. Expungement proceedings will largely focus on registrations obtained through the Madrid Protocol or the Paris Convention, which are not subject to use requirements prior to registration in the U.S., that traditionally have identified broad ranges of goods and services. The owner of a registration subject to expungement will have the opportunity to rebut a petition by either demonstrating use or arguing “special circumstances” that excuse non-use. Petitions requesting expungement will be accepted by the USPTO on or after December 18, 2021.
The second new proceeding involves re-examination of issued registrations. Re-examination proceedings will allow for the invalidation of a trademark registration in connection with goods and/or services that were not used in U.S. commerce on the date the Applicant claimed use (the “relevant date”). The TMA identifies the relevant date as either:
- The filing date of a use-based application; or
- The filing date of an Allegation of Use or the deadline for filing a Statement of Use in connection with intent-to-use applications.
This new proceeding provides a simple, cost-effective way to remove registrations based on use or intent-to-use in U.S. commerce that were secured with a fraudulent declaration of use. Trademark owners will find re-examination particularly helpful in clearing the recent influx of applications based on questionable declarations and specimens of use. To avoid or combat a re-examination challenge, trademark owners must pay particularly close attention when reviewing declarations of use and should consider memorializing use on each product at the time a declaration is signed.
Petitions requesting re-examination will be accepted by the USPTO on or after December 18, 2021. Key Details
More Robust Letters of Protest The TMA also provides new grounds and allows for more evidence to be filed in connection with Letters of Protest (“LOP”). LOPs are an existing means for alerting a trademark examining attorney of potential grounds for refusing a third-party trademark application early in the examination phase. Under prior USPTO practice, LOPs were restricted to potential refusals grounded in likelihood of confusion, prior registrations, descriptive or genericness, or ongoing litigation. The TMA expands the available grounds for filing LOP to include non-use, fraudulent specimens, or any ground upon which a registration can be refused under the Lanham Act. The TMA also makes LOP determinations final and non-reviewable.
Expansion of LOP procedures provides trademark owners with new tools to dispose of problematic third-party applications quickly and inexpensively. In successful cases, this will eliminate the need for instituting formal opposition proceedings that can involve delay and significant expense.
Updated Office Action Deadlines Currently, applicants must respond to a trademark examining attorney’s Office Action within six months of issuance to avoid abandonment of an application. Under the TMA, the response time will be shortened to three months with the option to file a one-time, three-month extension for a $125 fee. Failure to respond to an Office Action will result in abandonment of the application. This change will go into effect on June 27, 2022 at the earliest, but no later than December 1, 2022.
The USPTO states this shortened response time is “intended to promote efficiency in examination” since many Office Actions address simple, non-substantive issues like missing information. Further, “shortened response time may result in faster disposal of applications and reduce delay in examination of later-filed applications for similar marks.”
The new response period rules will affect all trademark applications except for applications filed under the Madrid Protocol (Section 66(a) applications), for which the six-month response period will remain to account for potential delays at the International Bureau.
To avoid paying the new fee, trademark owners will need to work quickly to gather information and agree on strategy for responding to Office Actions.
Conclusion The TMA has broad implications. The new rules and procedures can be used strategically to improve the efficiency and effectiveness of trademark clearance and enforcement efforts. We are happy to discuss these changes with you, including the how to utilize new opportunities available and how to safeguard trademark portfolios against newly available challenges.
Please reach out if you have any questions