Trademark Modernization Act

TMA Provides New Avenues for Eliminating Phantom Registrations from Federal Register
January 12, 2021

highlights

  • The TMA Provides for Third-Party Submission of Evidence During Examination and More Flexible Office Action Response Periods. 
  • The TMA Allows for Immediate Ex Parte Reexamination Proceedings to Challenge Evidence of Use Submitted in an Application.
  • The TMA Outlines Ex Parte Expungement Proceedings to Remove Unused Registrations 3 Years After Issuance.

As part of the passage of the Consolidated Appropriations Act on December 27, 2020, a bipartisan group of Congressional leaders has passed the Trademark Modernization Act (“TMA”) of 2020.  The TMA seeks to answer longstanding calls to address concerns about never used or fraudulently acquired trademark registrations. Several key components of the TMA work together to create a framework through which the United States Patent and Trademark Office (“USPTO”) will address the overcrowded Federal Register.

  1. The TMA Provides for Third Party Submission of Evidence During Examination and More Flexible Office Action Response Periods.

The TMA will allow third parties to submit evidence relevant to a ground for refusing a pending application. Within two months of receipt, the USPTO may then decide whether to include the evidence in the record and issue a refusal of the application based upon the evidence received. This procedure may provide for an efficient and cost-effective means of preventing improper registrations without having to initiate an opposition or cancellation proceeding. However, it remains unclear how this procedure will differ from those now in place for letters of protest.

Similarly, the TMA also provides for more flexible office action response periods. In some instances, which are yet to be clarified, the USPTO may allow applicants to extend the time to respond to an office action by up to 6 months. In other instances, the USPTO may require shorter response periods of as few as 60 days. Together, the forthcoming regulations may assist in shortening or lengthening the application process in an effort to maximize the inward flow of applications accompanied by proper use evidence and minimize the intake of those without such evidence.

  1. The TMA Allows for Immediate Ex Parte Reexamination Proceedings To Challenge Evidence of Use Submitted In An Application.

The TMA provides that any third party may request that the USPTO reexamine an application for non-use.  The reexamination may be filed immediately after and within 5 years from the date a use-based application is filed or evidence of use is submitted in connection with an intent-to-use application.  If the evidence submitted is persuasive, the USPTO may then institute a reexamination of the reported mark without further action by the requesting party. It may cancel the reported registration with respect to all goods therein that were accompanied by insufficient evidence of use of the applied-for mark if the registrant cannot present evidence rebutting the evidence submitted to the USPTO.

Notably, this section only applies to domestic applications-not those filed under §66 or §44 of the Trademark Act.

  1. The TMA Outlines Ex Parte Expungement Proceedings to Remove Unused Registrations 3 Years After Issuance.

The TMA also establishes an ex parte expungement proceeding, whereby any third party may file a petition to expunge a registration of a mark that has never been used in commerce on all or some of the goods and services listed in the registration. The petition must be filed between 3 and 10 years following issuance of the registration, but all registrations currently more than 3 years old will be subject to expungement petitions for the first 3 years after the USPTO regulations are implemented. If the evidence submitted by the petition is deemed sufficient by the USPTO, it may institute an ex parte expungement proceeding and the registrant would then have the burden to prove use. Where a registrant fails to meet its burden, the USPTO may elect to cancel the registration with respect to all goods and services that were never used in connection with the mark.

These rules apply to all applications filed in the United States, including registrations filed under §66 or §44. However, the TMA notes that foreign applicants subject to an ex parte expungement proceeding will be provided with an opportunity to submit evidence of special circumstances, such as embargos and international trade restrictions, that may support arguments of excusable non-use.

The TMA demonstrates an increased effort by Congress to assist the USPTO and trademark applicants in decluttering the Federal Register. Although the TMA’s framework addressing this ongoing challenge is presented generally, more specific guidelines and procedures can be expected in the near term. The Director of the USPTO was tasked with furthering Congress’ intentions in the TMA within the next year, which will result in short term changes to both the makeup of the Federal Register and established trademark law principles.

Lindsay M.R. Jones

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