USPTO’s Gift for the Holidays: Implementation of Trademark Modernization Act
On December 27, 2020, Congress passed the Trademark Modernization Act (“Act”) which brought about a number of trademark rule changes, including new mechanisms for removing Federal trademark registrations (or goods/services within them). These changes, while not particularly controversial (other than the fact that federal trademark law isn’t frequently amended), represent the USPTO’s efforts to stay in-line with developing trademark application/registration trends (e.g. fraudulent trademark registrations, inaccurate description of goods/services, cluttered register with non-use of marks, increased number of applications and therefore delays), and to streamline and speed up the overall process when possible.
While most USPTO regulations implementing the Act will become effective on December 18, 2021, one notable rule change that will impact all trademark practitioners won’t be implemented until December 1, 2022. Below is a table summarizing the key rule changes and when they become effective:
Rule |
Summary |
Effective Date |
*New* Ex Parte Expungement Proceeding (37 C.F.R. §§2.6, 2.91-2.94) (“never in use”) |
> Case-by-case analysis >Single internet search isn’t enough >Private investigation not required
|
12/18/21 (petitions accepted starting 12/27/21) |
*New* Ex Parte Reexamination Proceeding (37 C.F.R. §§2.6, 2.91-2.94) (“not in use on specific date”) |
> Use-based application: not in use on filing date of application
> Intent-to-use-based application: not in use on amendment to allege use or deadline for statement of use (whichever is later)
> Case-by-case analysis >Single internet search isn’t enough >Private investigation not required
|
12/18/21 (petitions accepted starting 12/27/21) |
*New* Inter Partes Expungement Ground (37 C.F.R. §2.111(b)) (“never in use”) |
|
12/18/21 |
*Revised* Shortened Office Action Response Periods (37 C.F.R. §2.62(a)) |
>Can still “revive” abandoned applications under 37 C.F.R. §2.66
|
12/1/22 |
Other rule changes beyond those above include formalizing the USPTO’s Letter of Protest practice (37 C.F.R. § 2.149: $50 per submission; USPTO must act within 2 months of receiving the letter of protest) and procedures concerning action on court orders cancelling or affecting a registration (37 C.F.R. § 2.177: submission of a certified copy of the court order is required), as well as adding provisions related to the false, fraudulent, or mistaken designation of an attorney (37 C.F.R. § 2.17(b)(4): such designations are no longer effective).
The Act also had one significant impact on trademark practice beyond the USPTO, namely in actions for injunctive relief in Federal court, by creating a rebuttable statutory presumption of irreparable harm for a party that successfully shows trademark infringement. This action by Congress resolved a previous Circuit split on whether irreparable harm could be presumed once trademark infringement was shown, and ensures that parties can have a greater chance of obtaining injunctive relief. This presumption of irreparable harm went into effect on December 27, 2020.
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