Regulations Implementing Trademark Modernization Act of 2020 Went Into Effect December 18, 2021

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The Trademark Modernization Act of 2020 (TMA) was enacted on December 27, 2020. The TMA includes a suite of changes and new procedures designed to combat inaccurate or fraudulent claims of use in U.S. commerce, a selection of which are discussed below. Regulations implementing the TMA fully went into effect on December 18, 2021. The TMA addresses several current issues in U.S. trademark law affecting trademark practitioners and trademark owner/applicants. 

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First, to address registrations that were never or are no longer in use in U.S. commerce, the TMA provides two new tools to assist with quick expungement or re-examination of registrations.  Second, third parties are able to challenge pending applications through an ex parte request for re-examination. Third, the TMA expands Letters of Protest to now apply to conflicting prior registrations and to challenge evidence that a mark is actually in use in US commerce. Fourth, the TMA adjusts deadlines to respond to Office Actions to be closer to the deadlines used during examination of patent applications. Now, instead of six months, Trademark Examiners may set response periods ranging from two to six months from the Office Action issuance date for certain types of actions such as non-substantive refusals relating to goods/services descriptions. 

Ex Parte Expungement

            To address the rising problem of improperly granted registrations, for example, registrations that were granted based on invalid specimens of use, the TMA now provides an ex parte post-registration expungement procedure. This new procedure is designed for third parties to challenge the entire registration or targeted goods and services. 

Notably, this process is ex parte, meaning the owner/applicant is only notified of the proceeding if the USPTO finds the third-party challenge to have made a prima facie case of non-use.  Currently, challenges to registrations require notice and participation of both parties. With this new procedure, the complaining party need only submit evidence of a reasonable investigation as to whether or not the registered mark is in use in U.S. commerce. This procedure was designed to target registrations obtained through the Madrid Protocol and the Paris Convention for which the proof of use filings are not due until the sixth year after registration date. The new ex parte expungement process is available only within the first three years after registration.

Ex Parte Re-examination

            This new ex parte procedure adds another tool to challenge a registered mark’s use in U.S. commerce as of a “relevant date” in the application process. “Relevant date” is defined as any of the following:

This new procedure is directed at fraudulent declarations/statements made by the owner or applicant, which may occur at any of the three “relevant dates” listed above. However, this procedure also applies to registrations that were obtained based on innocent misunderstandings of the “use in commerce” requirement. As with Ex Parte Expungement, the complaining party must submit evidence of a reasonable investigation into whether or not the mark was in use in commerce as of the identified “relevant date.” Accordingly, it is even more important that owner/applicants pay special attention to dates of use and accurate descriptions of goods/services. 

A special area of concern for owner/applicants is reviewing the goods/services on U.S. filings based on foreign applications/registrations. Practitioners must carefully review whether all the listed goods and services are or will be used in U.S. commerce. Importantly, this procedure must be filed within five years after the date of registration.

Letters of Protest

            In an expansion of applicability, Letters of Protest are now available to challenge applications by submitting evidence that relates to any ground on which an Examiner can refuse registration under the Trademark Act. Formerly, Letters of Protest were only available to challenge marks based on the mark’s genericness, prior registrations, related litigation, and Examiner error in calculating priority filing dates based on the Paris Conventions. Now, interested parties are able to submit evidence of prior trademark rights to challenge whether the applied-for mark should be registered. Essentially, brand owners and others are now able to challenge applications on any grounds upon which an Examiner can refuse registration.

Office Action Response Periods

            The reduction of Office Action response periods under the TMA is likely to be the most impactful change given that a large percentage of applications receive Office Actions. The current response period for an Office Action is six months from the mailing date, after which the application is abandoned in the absence of response. In an effort to control the proliferation of applications and registrations that are not actually in use in U.S. commerce, the TMA authorizes Examining Attorneys to set shorter response periods ranging from two to six months. Now, if the issue raised in the Office Action is able to be resolved fairly quickly, for example, amendments to goods and services descriptions, the shortened discretionary period is available to help applications move through the process more quickly. Trademark practitioners will need to prepare their docketing systems to account for these new discretionary deadlines. 

Conclusion

            While the changes ushered in by the TMA will likely cause temporary practical problems for trademark professionals and brand owners, these new law and implementing regulations are designed to keep the U.S. trademark registers clear of marks that should not be listed. Importantly, the TMA targets registrations obtained by fraudulent or unacceptable specimens of use and registrations that have inaccurate listings of goods and services. While we have yet to see how these new procedures function in actual practice, and whether or not they succeed in achieving the goals of the TMA, brand owners should be encouraged that there are now more options for enforcement and policing of marks and preventing improper registrations.