USPTO Implements Trademark Modernization Act (TMA) Final Rule
Alt Legal Team | November 18, 2021
On November 17, 2021, the United States Patent and Trademark Office (USPTO) published Changes to Implement Provisions of the Trademark Modernization Act of 2020 in the Federal Register. The Final Rule is effective on December 18, 2021, with the exception of certain sections that will not be effective until December 1, 2022. This article summarizes all of the changes reflected in the Final Rule.
As part of the publication, the USPTO included public comments and Office responses to each in order to provide more clarification about each rule. Additionally, the Office outlined the various changes it made to the proposals in the Notice of Proposed Rulemaking (NPRM).
For more information about the Trademark Modernization Act, check out the following resources:
- Alt Legal Webinar: Acting on the Trademark Modernization Act: How the implementation of the TMA will affect your practice
- Alt Legal Connect Session Summary: USPTO Updates: USPTO representatives explain recent and upcoming changes
- Restoration by Modernization: How the Trademark Modernization Act of 2020 Supports Consumer Expectations and Promotes Access to Justice
- Alt Legal Webinar: Modernize Your Approach to Trademarks: Understanding the Trademark Modernization Act
- Alt Legal Connect Session Summary: InRecent Exposure: Current Topics in Trademark Law
Expungement and Reexamination Proceedings
The Final Rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made.
Ex parte expungement proceedings must be instituted between 3 and 10 years following the date of registration. Until December 27, 2023 (3 years from the TMA’s enactment), a petitioner may request expungement for a registration that is at least 3 years old, regardless of the 10-year limit. Reexamination proceedings must be instituted during the first five years after a trademark is registered.
Quantity of Filings and Who May File
There will not be a limit on the number of petitions for expungement or reexamination of a mark at this time. Additionally, the rule will not require a petitioner to identify the name of the real party in interest on whose behalf the petition is filed but the Director may be able to request that in certain cases.
The fee is set at $400/class, balancing the costs associated with conducting those proceedings (including Director-initiated proceedings) and offering a less expensive alternative than TTAB.
Filing Procedures and Notice
- The petition documents will be uploaded to the registration record and viewable in the TSDR. The USPTO will send a courtesy email to the registrant and the registrant’s attorney, if emails are available, but the registrant does not and cannot respond UNLESS the Director actually institutes a proceeding under §2.92.
- The Director will notify both the petitioner and the registrant if it does decide to institute a proceeding (along with all the evidence supporting that decision). The petitioner will no longer be involved at that point and no further notices will be sent to the petitioner. Notably, the determination to institute a proceeding (whether driven by a petitioner or the Director) is not reviewable.
- The decision to institute a proceeding will come in the form of an Office action, and the registrant must provide evidence of use, information, exhibits, declarations to rebut the prima facie case by showing that use in commerce has been made in connection with the goods/services. The Office action will focus on the use in commerce question, but the requirement for representation, requirement to correspond electronically, and the requirement to provide a domicile address are in play as well.
- The registrant must respond to the initial Office action within 3 months of the issue date, but it can also request a one-month extension of time for a fee of $125. If the registrant doesn’t respond, the USPTO can terminate the proceeding and the registration can be cancelled (in whole or in part), but the registrant can also petition for a revival within 2 months after actual knowledge or up to 6 months after the date of cancellation, provided there was an extraordinary situation.
- Note: If the registrant provides a timely response and a bona fide attempt to advance the proceeding but omits some matter or fails to comply with some requirement, the registrant may be given 30 days or to the end of the time period in the Office action remaining to respond (whichever is longer). This will not, however, extend the time to appeal to TTAB or petition to the Director.
- If the response fails to establish use for the relevant goods/services or fails to comply with all outstanding requirements, the USPTO will issue a final action. The registrant will have 3 months to file a request for reconsideration or an appeal to TTAB. These deadlines cannot be extended.
New Nonuse Ground for Cancellation Proceeding
The Final Rule provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board (TTAB). Section 225(b)
Allows a petitioner to allege that a mark has never been used in commerce as a basis for cancellation. The new proceeding will be referred to as “Cancellation Proceeding before the TTAB” to differentiate it from ex parte reexamination and expungement proceedings.
This ground may be alleged at any time after the first three years from the registration date (Principal Register) or any time after registration with no end date (Supplemental Register).
The USPTO clarified that termination of an expungement or reexamination proceeding in favor of the registrant does not bar future nonuse cancellation actions.
Who May File
May be filed by anyone who believes they may be damaged by a registration.
Suspension of Proceedings
Where there are simultaneous cancellation proceedings and expungement/reexamination proceedings, the outcome of the expungement/reexamination proceedings may have bearing on the cancellation proceeding. Therefore the Board may suspend the cancellation proceeding.
Flexible Office Action Response Periods
The Final Rule establishes flexible Office action response periods of three months for Office actions under Sections 1 and/or 44 (including post-registration Office actions). Applications filed under Section 66(a) are not subject to the three month deadline; the deadline to respond to Office actions will remain at six months.
Applicants may request a single 3-month extension of the 3-month deadline for a $125 fee submitted through TEAS.
Applications under Section 66(a) will not be subject to the 3-month deadline. Office action response times will remain at 6 months for these applications.
Due to extensive technology changes needed to implement this rule both at the USPTO and docketing providers, it will not be fully implemented until December 1, 2022.
Addressing concerns over the new shortened response period, the USPTO contends that the shorter response time is the best option to promote efficiency in examining applications. Additionally, the USPTO notes that 3 months is sufficient to submit a response in most cases and historical data supports this. Applicants needing additional time to respond may file for a 3 month extension, allowing a full 6-month response period.
Statutory Authority for Letter of Protest Procedures
The Final Rule amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. Section 223. The Director shall determine whether evidence should be included in the record of the relevant application within two months of the date on which a letter of protest is filed. The fee to file a letter of protest remains at $50.
Suspension of USPTO Proceedings
The Final Rule amends the rules governing the suspension of USPTO proceedings. It clarifies that expungement and reexamination proceedings are included among the types of proceedings for which suspension of action by the Office or the TTAB is authorized.
Attorney Recognition Rules in Trademark Matters
The Final Rule amends the rules for attorney recognition in trademark matters. The USPTO will not recognize an attorney who has been “mistakenly, falsely, or fraudulently designated” and that an attorney need not formally withdraw under such circumstances. The USPTO had considered making additional changes to the revocation and withdrawal procedures, but after receiving public comments, decided not to implement these changes.
New Rule Regarding Submission of Court Orders
The Final Rule adds a new rule to address procedures regarding court orders cancelling or affecting registrations. 15 U.S.C. 1119. The rule codifies existing procedures outlined in the TMEP requiring parties to submit a certified copy of the order to the USPTO. The USPTO normally does not act on such orders until the case is finally determined. The party that wishes for the USPTO to take action on a court order is the party who must submit a certified court order.