By Natalie Guio
The Trademark Modernization Act (“TMA”) was enacted on December 27, 2020. Many of its provisions took effect in December of 2021, with shortened office action response deadlines still to take effect in 2022 and 2023. The USPTO’s primary goals in implementing the TMA are to deter fraudulent activity and abuse of the trademark register, clear unused registered marks from the federal trademark register, and to move applications through the registration process more efficiently. All applicants and registrants can be affected and should be aware of the major changes that have resulted from the TMA.
Shortened Office Action Response Deadlines
On December 3, 2022, pre-registration office action response deadlines will be shortened from 6 months to 3 months. Applicants will be able to request one extension of time for an additional 3 months for a fee of $125. Office actions issued prior to December 3, 2022 will maintain the 6 month response period. Post-registration office actions will have shortened response deadlines implemented in October 2023.
International applicants under Madrid Protocol (66(a) applicants) will not be affected by this change. 66(a) applicants will still enjoy a 6 month non-extendable response period.
Expungement and Reexamination Proceedings
On December 18, 2021 new ex parte expungement and reexamination proceedings were implemented as a cancellation tool to remove marks from the trademark register that were never used in commerce or were not in use as of a particular date relevant to the filing basis of the registration. The new proceedings are intended to be a more efficient and less expensive alternative to proceedings before the Trademark Trial and Appeal Board.
Expungement Proceedings
Any party may request a cancellation of some or all of a registered mark’s goods or services because the registrant never used the trademark in connection with some or all of the goods or services in U.S. Commerce. The request must be filed after the mark has been registered for at least 3 years, but before the mark has been registered for ten years. Until December 27, 2023, an expungement proceeding can be requested for any mark over 3 years old, even if the mark has been registered for over ten years.
Expungement proceedings are available for registrations based on Lanham Act Sections 1 (use in commerce), 44 (foreign registrations) and 66 (Madrid Protocol). Registrants relying on Sections 44 and 66 may still assert excusable non-use for the first 5 years of registration if there are special circumstances preventing the registrant’s use of the mark in the United States.
Reexamination Proceedings
Reexamination proceedings allow the petitioner to challenge a registration on the basis that the mark was not actually in use for some or all of the goods or services on or before its relevant date. For registrations that were originally applied-for based on use in commerce (and were not amended to an intent-to use basis), the relevant date is the filing date of the application. For registrations that were originally applied-for on an intent-to use basis, the relevant date is either the date an accepted allegation of use was filed or, if a statement of use was filed, the relevant date is the expiration date of the statement of use period. As such, reexamination proceedings are only available for registrations based on Section 1 of the Lanham Act. Reexamination proceedings must be requested before the mark has been registered for 5 years.
General Information Applicable to Both Expungement and Reexamination Proceedings
The party requesting cancellation must pay a $400 filing fee per class. The petitioner must also include a verified statement that they conducted a reasonable investigation/comprehensive search. The petition must include evidence supporting a prima facie case of nonuse in commerce and an index of the required evidence. After the petition for expungement or reexamination has been filed, the USPTO Director will determine if the requesting party has provided sufficient evidence to initiate the proceeding. If so, an Office Action will be issued to the registrant and the proceeding will continue between the USPTO and the registrant, without further involvement of the petitioner.
Registrants whose marks are the subject of a proceeding will need to be represented by a U.S. licensed attorney and will have 3 months to respond and assert use of their marks in commerce. The deadline is extendable by 1 month for a fee of $125.
The PTO Director can also initiate either of these proceedings on his own, without a third-party request.
Considerations for Trademark Owners
1. Registrants should consider reviewing their trademark portfolio to delete any goods or services not currently used in commerce in connection with each mark to prevent being the subject of either of these cancellation proceedings.
2. If a registrant qualifies to file a declaration of excusable non-use, consider doing so to prevent being the subject of a cancellation proceeding.
3. Registrants should be careful to document use of their marks in U.S. commerce so they are prepared in the event that their registration is challenged.
For more information on the TMA final rule, visit:
