Thought Leadership

USPTO’s Gift for the Holidays: Implementation of Trademark Modernization Act

Client Updates

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”)

  • Any party may request cancellation of some/all goods/services in registration because mark was never used in commerce
  • Has a “reasonable investigation” requirement

> Case-by-case analysis

>Single internet search isn’t enough

>Private investigation not required

  • Requires “prima facie” showing of nonuse
  • Ex parte procedure that provides faster, cheaper, more efficient way to remove registered marks than inter partes cancellation proceeding
  • Proceeding must be initiated between 3 and 10 years after registration date (any registration at least 3 years old until 12/27/23), and must be reviewed/approved by USPTO trademark director
  • $400 per class

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”)

  • Any party may request cancellation of some/all goods/services in a registration because mark was not in use as of particular 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)

  • Has a “reasonable investigation” requirement

> Case-by-case analysis

>Single internet search isn’t enough

>Private investigation not required

  • Requires “prima facie” showing of nonuse
  • Ex parte procedure that provides faster, cheaper, more efficient way to remove registered marks than inter partes cancellation proceeding
  • Proceeding must be initiated within 5 years after registration, and must be reviewed/approved by USPTO trademark director
  • $400 per class

12/18/21 (petitions accepted starting 12/27/21)

*New*

Inter Partes Expungement Ground

(37 C.F.R. §2.111(b))

(“never in use”)

  • Party may request expungement of registration in a cancellation proceeding because mark was never used
  • Ground can be alleged any time after the first 3 years from registration date
  • Does not affect non-use or abandonment grounds for cancellation
  • Does not require proof of “intent not to resume use” like abandonment grounds

12/18/21

*Revised*

Shortened Office Action Response Periods

(37 C.F.R. §2.62(a))

  • Parties must respond within 3 months to office actions issued during application examination or to a post-registration office action.

>Can still “revive” abandoned applications under 37 C.F.R. §2.66

  • Intended to promote efficiency in examination
  • May request 1, 3-month extension of time to respond for $125

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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