The new ex parte expungement and reexamination proceedings, introduced by the Trademark Modernization Act, are intended to be efficient ways of removing improper trademark registrations from the register.
But will expungement or reexamination always be the best strategy for challenging a trademark registration?
Before a mark can become registered in the United States, a trademark applicant must usually provide evidence that its mark is in use. Furthermore, to maintain the trademark registration the registrant must periodically show it is still using the mark in commerce. Unfortunately, the federal trademark registers are cluttered with marks that are not actually in use, and which potentially block legitimate trademarks from becoming registered. To address these issues, Congress enacted The Trademark Modernization Act of 2020 (TMA) as part of the coronavirus relief bill. See our discussion here. The TMA is to take effect on December 27, 2021, and the U.S. Patent and Trademark Office (USPTO) published its proposed rules to implement provisions of the TMA on May 18, 2021. The USPTO is accepting comments about the proposed rules until July 19, 2021.
Some of the proposed new procedures to streamline the removal of unused trademarks from the register are discussed here. The TMA also provides for flexible office action response periods during the prosecution of a trademark application, which the USPTO expects to go into effect on June 27, 2022. Currently, if an office action issues during the examination of a trademark application, an applicant must file a response within six months. The TMA, however, allows the Examiner to set a response period between 60 days and 6 months, with extensions available. For example, an Examiner may set a shortened period to respond to formalities such as amendments to identifications of goods and services or mark descriptions. To respond, however, to a more complex issue such as a likelihood of confusion refusal, an Examiner may set a longer response period to allow an applicant to investigate and gather evidence.