Trademark Law in the United States Updated: What Brand Owners Should Know
The Trademark Modernization Act of 2020 (“TMA”) took effect on December 18, 2021, and it established new processes for eliminating redundant trademarks from the federal trademark register as well as amending current trademark law guidelines. By clearing out the federal trademark register and enabling the United States Patent and Trademark Office (“USPTO”) the power to speed the registration process, the TMA makes it easier for genuine businesses to register their marks. Brand owners who are not utilizing their trademarks in commerce (in any of the registered classes for such marks) should be aware of the new methods the USPTO can cancel their marks.
New Procedures for Trademarks Cancellation
The Expungement Proceeding and the Reexamination Proceeding are two new trademark cancellation actions added to the TMA.
Expungement proceedings are underway. Requesting “cancellation of part or all of the products or services in a registration because the registrant never utilized the trademark in commerce with those goods or services,” anyone can start an expungement process. Expungement proceedings are generally only available between the third and tenth years after a mark’s registration date. However, the 10-year filing limit will be delayed until December 27, 2023. Anyone may launch an expungement procedure against any unused mark during this time if the mark has been registered for more than three years.
Anyone may propose “cancellation of some or all of the goods or services in a use-based registration on the ground that the subject trademark was not in use in commerce with those goods or services on or before a certain relevant date” in a reexamination procedure. The “relevant date” for trademark applications filed on a use-in-commerce basis is the mark’s filing date. The “relevant date” for applications submitted on an intent-to-use basis is the later of the filing date of the statement of use or the expiration of the deadline for submitting a statement of use. A request for reexamination must be made within 5 years of registration.
A application to the USPTO Director is required to initiate either procedure. A verifiable declaration establishing that a reasonable inquiry into the mark’s usage was completed, as well as a brief, factual foundation for the application, must be included in the petition. In addition, the petition must include enough information to show that the mark has never been used in commerce. The petitioner must pay a $400 charge for each type of commodity or service for which cancellation is requested.
Existing Trademark Law Procedures Will Be Amended
The TMA changed a number of legislation. The period to respond to USPTO Office Actions has been reduced to three months (from six months), with a single three-month extension available. A fee of $125 is charged for such an extension. Office Actions issued during an application’s inspection and after a mark’s registration are subject to a 3-month response period (e.g., renewals). Please keep in mind that if you do not respond, your application/registration will be considered abandoned/canceled. The Office Action response time of three months will not begin until December 1, 2022.
A few long-standing USPTO procedures were also codified into federal trademark law by the TMA. The TMA defined the USPTO’s letter-of-protest procedure, for starters. Third parties may submit material related to reasons for denial of a trademark’s registration (i.e., a letter-of-protest) to the USPTO during the first examination of an application (for a fee). The USPTO has two months to respond to such submissions, and its letter judgment is final and non-reviewable. Another noteworthy improvement is that the TMA codifies the USPTO’s practice of complying with court orders that cancel or affect trademark registrations if the courts provide certified copies of the orders to the USPTO.
