The Trademark Modernization Act: Implementing changes to protect brand owners
Guest blog by David Gooder, Commissioner for Trademarks
On November 17, we published the final rule to implement provisions of the Trademark Modernization Act (TMA), which provides trademark owners with powerful new tools to protect their brands and enables the USPTO to strengthen the integrity of the U.S. trademark register. While you can read more about these changes on our Trademark Modernization Act page, in this blog, I’d like to specifically highlight how the public helped us shape these provisions.
The ongoing COVID-19 pandemic presented both challenges and opportunities to seek input from the public regarding our implementation of the TMA. While we couldn’t travel the country and meet with stakeholders in their communities (as we did when implementing the America Invents Act), or hold events at USPTO headquarters in Alexandria, Virginia, the widespread use of video conferencing allowed us to get out early and frequently to stakeholder groups as we developed the rules and procedures.
Starting in late January, prior to publication of the notice of proposed rulemaking (NPRM), we hosted meetings and virtual roundtables to field questions and comments and to give stakeholders the opportunity to directly voice their concerns and viewpoints. Doing so virtually allowed us to gain this input far more quickly and efficiently than in-person events. In fact, over 500 people registered for our March 1 roundtable. We heard from in-house counsel for multinational corporations and partners at major IP firms, as well as small business owners and practitioners working for nonprofits and in under-resourced communities. The diversity of perspectives and breadth of feedback from these meetings gave us valuable guidance through the rule drafting process. Watch the recording of the roundtable.
Based on the success of the first roundtable, we held two more in June after publication of the NPRM. Combined, another 600 people registered.
Additionally, throughout 2021, we met virtually with industry and practitioner groups to present the about the TMA and answer questions. We created new channels, including a special TMA email box, TMFeedback@uspto.gov, to field questions and concerns.
All comments we received during this entire process were read and heard, and many of them influenced the final rule. For example, after receiving comments on the NPRM, we increased the time allowed for responding to a non-final office action issued in connection with an expungement or reexamination proceeding from two months to three months and added a one-month extension of time to respond. We also increased the time allowed for responding to a final action in such cases to three months.
We also asked the public for comments on two specific issues that were not required by the TMA, but helped us determine what to include in the final rule:
• Whether to establish a limit on the number of petitions for expungement or reexamination that can be filed against a registration. The public consensus was that we shouldn’t.
• If the USPTO Director should require a petitioner to identify the name of the real party in interest on whose behalf the petition for expungement or reexamination is filed. The public consensus was that petitioners shouldn’t be required to identify the real party, but that the Director should be able to require it if abuse was suspected.
To each of you who took part in this collaborative effort to implement the most sweeping change to our trademark law in a generation - thank you. Your participation shows that every voice has the power to shape government in ways that better serve the public.
Stay tuned as we continue to implement changes to modernize and strengthen our trademark system, to the benefit of businesses, brand owners, and consumers everywhere.