USPTO proposes new rules to implement the Trademark Modernization Act

To implement the Trademark Modernization Act of 2020 (TMA), we’re proposing changes to the Trademark rules of practice. The proposed changes, when implemented, will give U.S. businesses new tools to clear away unused registered trademarks from the federal trademark register and will give the USPTO the ability to move applications through the system more efficiently. 

Read the notice of proposed rulemaking (NPRM) to learn more about these proposed changes and see public comments regarding the NPRM. Because the procedures discussed below are based on proposed rulemaking, they are subject to change and will not take effect until after a final rule is published.

New procedures

Two ex parte proceedings to cancel unused registered trademarks

The TMA’s new expungement and reexamination proceedings will provide a faster, more efficient, and less expensive alternative to a contested inter partes cancellation proceeding at the Trademark Trial and Appeal Board (TTAB). 

Expungement proceeding

Third parties will be able to 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. 

Time limit. This proceeding 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.

Reexamination proceeding

Third parties will be able to request cancellation of 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.

  • When the underlying application was initially filed based on use of the trademark in commerce, the relevant date will be the filing date of the application.
  • When the underlying application was filed with an intent-to-use basis, the relevant date will be the later of the date that an amendment to allege use was filed or the date that the deadline to file a statement of use expired.

Time limit. This new procedure must be requested within the first five years after registration.

Any goods or services that are cancelled as a result of these proceedings will no longer be covered by the trademark registration.

Changes to existing procedures

New ground for TTAB cancellation proceeding

The proposed rules will allow parties to request the cancellation of a registered trademark through the TTAB on the ground 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.

Shorter three-month response period for office actions

Under the proposed rules, applicants (excluding Madrid Section 66(a) applicants) and registrants will be required to respond to office actions within three months. This is to promote greater efficiency in examination. This shorter response period will also apply to post registration office actions.

Applicants and registrants will have the option to 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 or 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 have proposed delaying implementation of this shorter response period until June 27, 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, regarding a pending trademark’s registrability. 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 our decision on a letter of protest is final and non-reviewable.

Other rule changes

Attorney recognition until revocation or withdrawal

Under our current rules, recognition ends when an application is abandoned or a registration expires or is cancelled, or when the applicant or registrant revokes the attorney appointment or the attorney withdraws from representation. Under the proposed rules, recognition would continue when, for example, an application abandons, post-registration documents are filed and accepted, or a registration expires or is cancelled. In addition, change of ownership would not result in a change in attorney recognition, unless a proper revocation or withdrawal is filed. 

These changes will make our rules more consistent with our current practice and facilitate implementation of a role-based, access-controlled system for applications and registrations that we’re developing. Such a system will increase security in our filing system and allow us to track and combat misleading non-USPTO solicitations sent to applicants and registrants.

Attorney withdrawal requirements codified

The proposed rules clarify attorney obligations when withdrawing from representation and differentiate the grounds under which the attorney may request to withdraw versus those situations where an attorney must request withdrawal. This will allow us to be consistent with the USPTO Rules of Professional Conduct.

Court orders concerning registrations

The proposed rules codify 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 these proposed rule changes become effective?

After we review your comments regarding these proposed rule changes, we will draft a final rule that will go into effect by December 27, 2021, except as to the flexible response period provisions which we proposed to go into effect on June 27, 2022.

Roundtable comments

We held public roundtables on the NPRM. You can read the comments that helped inform us about what to include in the TMA NPRM. View the roundtable event details, recordings, and slides below: