Enacted on December 27, 2020, the Trademark Modernization Act (TMA) amends the prior Trademark Act of 1946. The main amendments proposed by the TMA are:

(1) To set Office Action response deadlines, at the Examiner’s discretion, between thirty (30) days and six (6) months from the issuance of the Office Action, but allowing applicants to extend the deadline up to a maximum of six (6) months;

(2) To create new ex parte proceedings that would allow a third party to challenge whether a trademark is properly in use in commerce:

a. In an expungement proceeding, a third party may request cancellation of part or all of the registered goods and/or services, and the USPTO must determine whether the evidence of record supports the challenge that the trademark was never used in commerce with those listed goods and/or services. An expungement proceeding must be requested between three (3) to ten (10) years from the date of registration. Please note that until December 27, 2023, such proceeding may be requested for any registration of at least three (3) years, even if such registration is older than ten (10) years.

b. In a reexamination proceeding, a third party may request cancellation of part or all of the registered goods and/or services, and the USPTO must determine whether the evidence of record supports the challenge that the mark was not in use with part or all of the goods and/or services as of the application filing date (if the initial application was based on use) or as of the deadline to file a statement of use (if the initial application was based on intent-to-use). A reexamination proceeding must be requested within five (5) years from the date of registration.

(3) To provide a new ground for instituting a Trademark Trial and Appeal Board (TTAB) cancellation proceeding based on non-use. A proceeding based on this ground may be raised after three (3) years from the date of registration;

(4) To set a two-month deadline for the USPTO to respond to letters of protest and to render such decisions final and non-reviewable.

Written comments to these proposed rules and amendments must be received on or before July 19, 2021. Comments should be submitted through www.regulations.gov. The proposed rule changes should go into effect by December 27, 2021, except that flexible response period provisions should go into effect June 2022. Should you require assistance navigating the impending rule changes, please contact us at http://www.natterip.com/contact-us.

Disclaimer: The information in this blog post (“post”) is provided for general informational purposes only, and may not reflect the current law in your jurisdiction. No information contained in this post should be construed as legal advice from Natter & Natter, nor is it intended to be a substitute for legal counsel on any subject matter. No reader of this post should act or refrain from acting on the basis of any information included in this post without seeking the appropriate legal or other professional advice on the particular facts and circumstances at issue from a lawyer licensed in the recipient’s state, country or other appropriate licensing jurisdiction.

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