Trademark Modernization Act Now In Effect

On December 18, 2021, the Trademark Modernization Act of 2020 (TMA) went into effect. The TMA features new procedures, in addition to changes to existing procedures, focused on achieving a more efficient system to move applications through the United States Patent and Trademark Office’s (USPTO) registration process and to remove erroneous registrations and filings. The TMA also resolves a circuit split regarding irreparable harm in trademark actions for injunctive relief.

Changes to Existing Procedures

The TMA introduces two notable changes to existing procedures: (A) a shorter three-month response period for Office Actions, and (B) an expanded letters of protest.

Three-month Response Period for Office Actions

In an effort to unclutter the register, under the TMA, applicants must respond to issued Office Actions within three months from the issuance date of an Office Action in order to avoid abandonment of the application. This is different than the USPTO’s current practice, which provides applicants with six months to respond to Office Actions. An applicant can request a single three-month time extension for a $125 fee.

Implementation of this new practice has been postponed to December 1, 2022.

Expanded Letters of Protest

The USPTO’s current practice limits letters of protest, which are used to submit evidence relevant to the examination of a trademark application, to specific issues, like genericness/descriptiveness, likelihood of confusion with prior registrations, and ongoing infringement litigation. The TMA now provides statutory authority for third parties to submit evidence to the USPTO relevant to any ground on which an Examining Attorney can refuse registration of a mark.

The TMA also: a) sets a two-month deadline for the USPTO to act after a letter of protest is filed, b) authorizes the USPTO to charge a fee for filing a letter of protest, and c) states that the Director’s decision on a letter of protest is final and cannot be reviewed.

New Ex Parte Procedures

The TMA also introduces two new proceedings to cancel registered trademarks that are not “used in commerce”: (A) an ex parte expungement proceeding, and (B) an ex parte reexamination proceeding. These new proceedings provide a more efficient, less-expensive alternative to a inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB).

Ex Parte Expungement Proceeding

Under this new post-registration procedure, anyone can petition the USPTO to expunge, in whole or in part, an improperly granted registration that lists goods or services for which a mark has never been used in commerce. To initiate this proceeding, a party must supply evidence of a “reasonable investigation” showing that the mark was never used for the specific goods or services. If this standard is satisfied, and the Director finds a prima facie case, the registrant will be notified.

Parties may also request that the TTAB cancel a registered mark on this new expungement ground – that the mark was never used in commerce.

Until December 27, 2023, this expungement proceeding can be filed for any registration at least three years old. However, after this date, expungement may only be filed between three and 10 years after a mark’s registration date.

Ex Parte Reexamination Proceeding

The TMA’s new ex parte reexamination proceeding is similar to the above-mentioned expungement procedure, but in this case, registrations are challenged on the basis that a mark was not used in commerce for some or all of the goods or services listed in the registration prior to the relevant registration date. This procedure is initiated when a party supplies evidence of a “reasonable investigation” showing that the mark was not used for the specific goods or services, and this procedure can be initiated by anyone.

When an application was filed based on actual use of the trademark in commerce, the relevant date is the filing date of the application. However, when an application was filed based on an intent-to-use, the relevant date is the later of (a) the date that an amendment to allege use was filed or (b) the date that the deadline to file a statement of use expired.

This reexamination procedure must be filed within five years of registration.

Other Noteworthy Effects

The TMA restores the presumption of irreparable harm in a mark owner’s request for injunctive relief upon a showing of trademark infringement. Prior to this Act, appellate courts have been split on whether harm could be presumed, but the TMA now establishes a nationwide uniform standard of presumed harm.

The TMA states that an attorney designation that was made falsely, fraudulently, or mistakenly will be considered ineffective. Accordingly, the attorney in the designation need not formally withdraw.

Finally, the TMA codifies the longstanding rule that certified copies of court orders cancelling or affecting a registration must be submitted to the USPTO, and that the USPTO will not act on the orders until the case is finalized.

As mentioned above, the TMA went into effect on Saturday, December 18, 2021, except for the implementation of the shorter response period for Office Actions, which will go into effect on December 3, 2022.