The Trademark Modernization Act: What brand owners need to know
Guest blog by David Gooder, Commissioner for Trademarks at the USPTO
Sustaining and promoting a healthy, vibrant trademark system is at the core of what we strive to do at the USPTO. That is why we welcomed the passage and signing of the Trademark Modernization Act (TMA) this past December. The TMA includes key provisions that will give the USPTO and trademark owners additional tools to better protect and strengthen the integrity of the federal trademark register.
To help drive U.S. innovation, in 1946, Congress passed the United States Trademark Act, widely known as the Lanham Act. This federal statute sets out procedures for the registration of trademarks. Trademark owners may apply for a U.S. registration if they are either using the mark at the time of filing or have intent to use the mark in commerce. However, actual use of the trademark in commerce is required to obtain and maintain a U.S. registration.
In recent years, the USPTO has received an increasing number of trademark filings with dubious and sometimes bogus claims of use. This raises concerns about invalid registrations that clutter the register and interfere with the adoption of new marks. It is in this arena that the TMA will provide brand owners and the USPTO with the following powerful new tools:
- The TMA codifies the Letter of Protest procedure, which allows third parties to submit evidence during the examination of trademark applications, including evidence that claims of use in an application are inaccurate.
- The TMA gives the USPTO the authority to shorten response deadlines in order to move applications more quickly through the system, thereby allowing us to swiftly dispose of applications where fraud or other deceptive or deceitful behavior is evident.
- The TMA provides new registration cancellation mechanisms so that third parties or the USPTO Director may challenge registrations that are not in use without having to engage in more expensive proceedings before the Trademark Trial and Appeal Board.
Efforts to implement these and other provisions of the TMA are well underway, with the deadline for implementation set for December 27, 2021. Public feedback has been and will continue to be essential to USPTO’s rulemaking process. Brand owners and stakeholders can learn more by visiting the Trademark Modernization Act page of the USPTO website, emailing TMFeedback@uspto.gov with any feedback, or by viewing the recording of our public roundtable on the implementation of the TMA held on March 1, 2021. Further, there will be the opportunity to submit formal comments on the Federal Register website next month when a Notice of Proposed Rulemaking is published.
Our trademark ecosystem will benefit greatly from these important new provisions which will remove clutter and provide greater access to new marks, thus benefiting businesses and entrepreneurs throughout the United States.