The Trademark Modernization Act of 2020 (TMA) contains, among other things, the latest in a series of initiatives to improve and strengthen the accuracy and integrity of the federal trademark register. The TMA provides new procedures to challenge applications and registrations with inaccurate claims of use. These new procedures will help U.S. businesses make better informed marketing and branding decisions regarding their trademarks.
The TMA was signed into law on December 27, 2020, and will be implemented by December 27, 2021.
New major procedures
Two new ex parte post-registration proceedings to cancel unused trademarks
You can file a petition with us to request that the USPTO Director institute a proceeding to expunge (remove) or reexamine a registration for a trademark that either has never been used in commerce or was not used in commerce before a particular relevant date. Both petitions will generally require a verified statement establishing that a reasonable investigation was conducted to determine whether the trademark had been used in commerce with specified goods or services, evidence, and associated fees.
- Expungement (Removal)
You may request that we remove some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. This new procedure must be brought between three to ten years after the registration date.
You may request that we remove some or all goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. For example, this proceeding would address the date the underlying use-based application was filed, the date an amendment to allege use for an underlying Section 1(b) application was filed, and the expired period of time for filing a statement of use for an underlying Section 1(b) application. This new procedure must be brought within the first five years after the trademark registers and is generally directed at registrations where a questionable specimen showing use in commerce of the trademark was submitted during examination of the underlying application.
If you file a petition for either procedure, the Director will determine whether the expungement or reexamination petition establishes a prima facie case that the trademark was never used in commerce or was not in use in commerce as of the relevant date. If so, the Director will grant the petition, institute the proceeding, and require the registrant to respond with evidence of use or excusable nonuse. Based on consideration of all the evidence, we will decide whether to remove some or all of the challenged goods or services in the registration. If we determine that the registrant had used the trademark with some or all of the challenged goods or services in either proceeding, no new or further ex parte expungement or reexamination challenges will be permitted against those same goods or services. If we do remove some or all of the goods or services, the registrant may appeal this decision to the Trademark Trial and Appeal Board (TTAB), and, after that, to the U.S. Court of Appeals for Federal Circuit.
The Director can initiate either of these proceedings without a third party petition if the Director discovers information that supports a prima facie case that the trademark has never been used in commerce or has not been used in commerce as of a particular relevant date with certain goods or services covered by the registration.
New ground for a TTAB cancellation proceeding
This new ground is substantively equivalent to the expungement claim that a registered trademark has never been used in commerce, as described above, but may be brought at any time following three years from registration.
Flexible response periods for office actions
We have the authority to set office action response periods that are shorter than the current six-month response time but not less than 60 days. The applicant may request extensions to have the full six months. The Director may set the number, length and fee for extensions of time by rule.
Third-party submissions during examination (Letters of Protest)
The TMA provides statutory authority for the longstanding USPTO Letter of Protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a trademark’s registrability. The TMA sets a two-month deadline for us to act on these submissions and authorizes us to charge a fee for them. The TMA also provides that the USPTO's decision on whether to include the evidence in the application record is final and non-reviewable. The USPTO issued rules setting out procedures and a $50 fee for these submissions that went into effect on January 2, 2021. Consistent with the requirements of the TMA, the rule requires that the submission must identify each legal ground for an examining attorney to refuse registration or issue a requirement, include evidence that supports those grounds and a concise description for each piece of supporting evidence, and pay the prescribed fee. See 37 C.F.R. §§ 2.6(a)(25), 2.149. New regulations are not anticipated to implement this provision.
Creating a uniform rule establishing a rebuttable presumption of irreparable harm
The TMA also provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits. This uniform rule will help trademark owners enforce their rights against infringers in federal court. No rulemaking is necessary to give effect to this provision.
Submit your feedback by email to TMFeedback@uspto.gov. Include in the subject line "TMA feedback." Plain text format is preferred, but you can also submit comments in a PDF or word processing file format (DOC or DOCX). Because your comments will be made available for public inspection, information that you don’t want to make public, such as an address or phone number, should not be included in the comments.
Read public comments on the TMA.