Trademark Modernization Act: Final Rules

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The USPTO recently issued its final rules to implement the Trademark Modernization Act, whose goal is to clear away unused registered marks and make the trademark registration process more efficient. Below, we highlight public comments regarding the implementation of the Act, as well as the final details regarding the implementation of the Act.

  1. Ex Parte Expungement and Reexamination Proceedings
  2. The expungement and reexamination proceeding procedures were previously discussed here and here on the TCAM Today blog. The new rules will go into effect on December 18, 2021, and petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021. To institute an expungement or reexamination proceeding, a petition must be submitted with 1) a verified statement that establishes a reasonable investigation was conducted regarding whether the trademark had been used in commerce; 2) evidence supporting a prima facie case of non-use in commerce; and 3) a filing fee of $400 per class of goods or services.

    The petitioner requesting the institution of proceedings for reexamination or expungement does not need to be identified, although the USPTO Director may require disclosure of the actual identity of an attorney’s client. The USPTO weighed comments that requiring the real party in interest to be identified could discourage legitimate petitions from being filed where the potential filers have concerns about retaliation, against comments that requiring the identification of the real party in interest would discourage and prevent abusive filings. The USPTO decided that the real party in interest does not need to identify itself, but that the Director has the discretion to require the disclosure of the real party in interest to discourage abusive filings.

    Regarding what constitutes a “reasonable investigation,” the regulations note that “a single search using an internet search engine likely would not be considered a reasonable investigation.” After consideration of comments about what the required evidence should be, the USPTO declined to adopt a requirement that evidence from at least one source in addition to an internet search be provided before a prima facie case can be established.

    If the USPTO Director decides a prima facie case of non-use has been established, then a proceeding will be instituted. Once a proceeding is instituted, the petitioner will not have any further involvement. Instead, an Examiner will issue an office action requesting evidence of use from the Registrant. The Registrant will then have three months to respond, and may request a one-month extension with the payment of a $125 fee. The USPTO increased the time period to respond from two months to three months after consideration of the comments received in response to the proposed rules. If the Registrant fails to timely respond, the rule provides that the USPTO will terminate the proceedings and the registration will be cancelled, in whole or in part, as appropriate. Also, in response to public comments, the USPTO has included a provision that the USPTO has the option to issue a 30-day letter if a timely response by the registrant is a substantially complete response to the office action, but consideration of some matter or compliance with a requirement has been omitted.

    After the Registrant files its response to the office action, the Examiner will consider all of the submitted evidence and decide whether the registration should be cancelled or partially cancelled as to some of the challenged goods or services. The USPTO considered public comments that Examiners should also conduct their own research into whether there is use of a registered mark. The USPTO decided, however, that Examiners will not conduct independent research to ensure that the prima facie case is met, nor will Examiners supplement the evidence of the petitioner. If the Examiner decides the registration should be cancelled, then the Examiner’s decision will be submitted in a final action. The Registrant will have three months from the date of the final action to file a request for reconsideration or an appeal to the Trademark Trial and Appeal Board.

    The USPTO had considered whether to limit the number of petitions for expungement or reexamination that can be filed against a registration. After considering public comments regarding the possibility of abusive filings, however, the USPTO decided not to impose a limitation on the number of petitions. Instead, the USPTO will collect data for a report on the effectiveness of the expungement and reexamination proceedings, and decide after it has more experience with the proceedings whether limitations should be imposed.

    The USPTO had also considered whether a registrant’s failure to respond in an expungement or reexamination proceeding, which results in the cancellation of some of the goods and/or services in the registration, should automatically result in the registration being selected for audit when the next maintenance filing is submitted. After consideration of the comments, however, the USPTO decided that such registrations will not automatically be selected for audit.

    The filing of a petition for expungement or reexamination provides grounds for requesting a stay of the period for replying to an office action, and for requesting a stay of a Trademark Trial and Appeal Board proceeding. The suspension will not be lifted until the time for seeking review of any final decision has expired, a decision denying or granting such review has been rendered, and any further review has been completed.

  3. Expungement before the TTAB
  4. The Trademark Modernization Act also allows the new ground of expungement, namely, that a registered trademark has never been used in commerce, to be brought in a cancellation proceeding before the Trademark Trial and Appeal Board.

  5. Shortened Response Period for Office Actions
  6. The shortened office action response period was previously discussed here. The time period to respond to 1) office actions issued during examination of an application, or 2) post-registration office actions will be three months. A single three-month extension of time to respond may be requested for a fee of $125, and must be filed within the first three months of the response period, or the application will be abandoned or the registration will be cancelled. The shorter response period will not go into effect until December 1, 2022. The USPTO decided to keep the response time to office actions for Madrid Section 66(a) applications at six months, after noting that 62% of Madrid applicants took six months to file a response. Thus, the additional processing required for these applications justifies maintaining the current six-month deadline.

  7. Attorney Recognition
  8. The USPTO had proposed changing its rules so that recognition of a qualified attorney would continue until the mark owner affirmatively revokes the appointment or the attorney withdraws from representation. Under the current practice, recognition automatically ends after a listed event such as registration. See discussion of proposed rule change discussed on the TCAM Today blog. After considering public comments regarding the proposed attorney recognition rule changes, the USPTO decided that additional planning is required before implementing the rule changes. Thus, the only rule change regarding attorney recognition will be the addition of Rule § 2.17(b)(4), which adds that when a practitioner has been mistakenly, falsely, or fraudulently designated as an attorney for an applicant, registrant, or party to a proceeding without the practitioner’s prior authorization or knowledge, recognition of that practitioner shall be ineffective.

The Faegre Drinker TCAM team will continue to monitor the USPTO’s implementation of the Trademark Modernization Act to best advise its clients.