The fourth blog post in our continuing series on The Trademark Modernization Act of 2020 (TMA) comes on the heels of the July 19, 2021, deadline for the public to submit comments on the proposed rules. As discussed by our TCAM blog here, here, and here, the majority of the TMA is to take effect on December 27, 2021, with the flexible response period provisions following in 2022. This blog post highlights some of the proposed rules relating to attorney recognition, revocation, and withdrawal.
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.
The Nuts and Bolts of Expungement and Reexamination
You may remember our blog post here, discussing the Trademark Modernization Act of 2020, which became law at the end of last year. To implement the Trademark Modernization Act, the United States Patent and Trademark Office (USPTO) has proposed changes to the trademark rules of practice, which we begin to explore in the following post. Over the coming weeks and months, stay tuned for further commentary, insights and practice tips on these proposed changes!
According to Commissioner for Trademarks David Gooder, during a recent USPTO virtual roundtable event, “protecting the integrity of the US trademark register is, and will remain for some time, one of our top priorities.” Keeping the register clear of improperly obtained trademark registrations helps ensure that legitimate businesses can register their marks with the USPTO, and enforce those rights against infringers.
In February 2020, Faegre Baker Daniels and Drinker Biddle & Reath LLP combined to form one of the nation’s 50 largest law firms. Soon after the combination, Faegre Drinker shifted to a virtual work environment to protect our clients, colleagues and loved ones during the global COVID-19 pandemic. We nevertheless remained committed to the success of our clients in a challenging year, and focused on serving clients with our new firm’s combined capabilities.
This month marks not only the first year of Faegre Drinker, but also the inaugural year of TCAM Today – Faegre Drinker’s blog covering all things trademark, copyright, advertising and media. In 2020, Faegre Drinker’s team of more than 30 T-CAM professionals shared their insight on topics ranging from social media influencers to trademark trolls.
In a year too often filled with unforeseen developments of every kind, a final surprise for many who were not paying close attention has emerged from December’s marathon stimulus and budget negotiations. This week, Congress included a trio of notable and hotly debated intellectual property measures in its multi-trillion-dollar spending and relief package. These bills, if signed into law as expected, could fundamentally alter the manner in which intellectual property owners protect and enforce their rights.