Regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect on December 18, 2021. Individuals, businesses, and the United States Patent and Trademark Office (USPTO) now have new tools to clear away unused registered trademarks from the federal trademark register and the USPTO has the ability to move applications through the registration process more efficiently.
Read the final rule to learn more about these changes. A summary of the new features is provided below.
Two ex parte proceedings to cancel unused registered trademarks
The new ex parte expungement and reexamination proceedings provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB).
They also supplement existing administrative maintenance requirements for registrations. Owners of registered trademarks must regularly prove that they’re using the trademark in commerce with all of the goods or services listed in the registration. However, unless registrations are audited, they only have to provide one specimen of use in commerce for each class of goods or services, and they choose which specimen to provide.
These new proceedings allow any party to challenge any good or service in a registration, if that party provides evidence establishing a prima facie case of nonuse. Registration owners must then prove that they were using the challenged goods or services in commerce on or before a particular relevant date.
Pursuant to 35 U.S.C. §3, the Director has delegated the authority to the Commissioner for Trademarks to make determinations and issue notices and decisions related to any proceeding under the TMA, and to exercise supervisory authority in trademark-related matters pursuant to 35 U.S.C. §2. This authority has been further sub-delegated to the Deputy Commissioner for Trademark Examination Policy and the Deputy Commissioner for Trademark Operations. The authority to make determinations and issue notices and decisions related to any TMA proceeding has been further sub-delegated to appropriate officials within the Trademarks organization.
Any party may request cancellation of 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. Expungement is available for a registration based on use in commerce, a foreign registration, or the Madrid Protocol.
Time limit. Expungement must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.
Any party may request cancellation of some or all of the goods or services in a use-based 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.
- When the underlying application was initially filed based on use in commerce and not amended during examination to an intent-to-use basis, the relevant date will be the filing date of the application.
- When the underlying application was filed or amended to an intent-to-use basis, the relevant date is the date that an accepted amendment to allege use was filed or the end date of the statement-of-use period for an accepted statement of use.
Time limit. Ex parte reexamination must be requested within the first five years after registration.
Changes to existing procedures
New ground of expungement for TTAB cancellation proceeding
Parties may request the cancellation of a registered trademark through the TTAB on the new ground of expungement, that is, that a registered trademark has never been used in commerce. This ground for cancellation will be available at any time after the first three years from the registration date. The existing grounds for cancellation of nonuse and abandonment are unaffected by this new expungement ground for cancellation.
Shorter three-month response period for office actions
Applicants (excluding Madrid Section 66(a) applicants) or registrants must respond within three months to either office actions issued during examination of an application or post registration office actions. They can request a single three-month extension of time to respond for a fee of $125. If we do not receive the extension request or response within the first three months, the application will be abandoned or the registration will be cancelled or will expire. Due to the extensive changes needed to our information technology systems, we are delaying implementation of this shorter response period until December 1, 2022.
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, relevant to a ground for refusal in examination. The TMA sets a two-month deadline for us to act on these submissions, authorizes us to continue to charge a fee for them, and provides that the Director's decision on a letter of protest is final and non-reviewable.
Other rule changes
Attorney designations that are mistaken, false, or fraudulent
Any designation of attorney that was made falsely, fraudulently, or mistakenly will not be effective. For example, if an applicant designates an attorney without the attorney’s prior authorization or knowledge, the USPTO will only communicate with the applicant, instead of the attorney. The attorney in the designation does not need to formally withdraw.
Court orders concerning registrations
The final rule codifies the USPTO’s longstanding procedures concerning action on court orders cancelling or affecting a registration under 15 U.S.C. §1119, which are currently described in Section 1610 of the Trademark Manual of Examining Procedure (TMEP). The USPTO requires submission of a certified copy of the court order and normally does not act on such orders until the case is finally determined.
When will the TMA final rule become effective?
The final rule went into effect December 18, 2021, except for the implementation of the shorter response period for office actions that will go into effect on December 1, 2022. Petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021.
In 2021, we held several public roundtables before and after publishing the Notice of Proposed Rulemaking (NPRM) to answer questions and gather informal comments on the TMA. We also collected formally submitted public comments.
First NPRM roundtable
Final NPRM roundtable
This guidance also serves as a small entity compliance guide for purposes of Section 212 of the Small Business Regulatory Enforcement Fairness Act of 1996.