Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rule-making[1] to implement provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020.[2] The public has until July 19, 2021, to comment on the proposed rule-making before implementation. The proposed rules create new nonuse cancellation procedures, shorten office action response deadlines and expand on the USPTO’s Letter of Protest procedures, among other changes. These and other rule changes are summarized below. We encourage all practitioners to review the notice in detail and provide comments.

  1. Ex Parte Expungement and Reexamination Proceedings: To address problems of fraudulent filings and continued registration of marks not properly in use in commerce, the USPTO proposes rules implementing the new ex parte expungement and reexamination proceedings created by the TMA. These proceedings can be initiated by third parties or the USPTO Director to challenge whether a registrant has made use of its mark in commerce. The details of the proposed procedures for these proceedings can be found in the notice.
  2. Estoppel and Co-Pending Proceedings: The USPTO proposes rules on estoppel and barring co-pending proceedings involving the same registration and goods and/or services for the new expungement and reexamination proceedings. Following the termination, expungement or reexamination proceedings cannot be brought again for the same goods and/or services at issue in the original proceedings.
  3. Attorney Recognition: The USPTO proposes ending the automatic termination of an attorney’s representation when an application registers, ownership changes or an application is abandoned. Under the proposed rule, the USPTO would continue to recognize the applicant’s or registrant’s attorney as its representative until the owner revokes the appointment or the attorney withdraws the representation. Representation will continue even after an application is abandoned or a registration is canceled.
  4. Flexible Response Periods: Office action response deadlines are currently set at six months. The TMA provides for flexibility in setting office action response deadlines from 60 days to six months with options for extensions of up to a full six months. The USPTO proposes amending office action response periods to three months for applications under sections 1 and 44. Applicants can request a single three-month extension upon payment of a $125 fee for electronically filed extension requests. But for Section 66(a) applications, the office action response deadline shall remain at six months from issuance of the office action. The USPTO is considering two alternatives to this proposal and is seeking comments on all three options.
  5. New Nonuse Ground for Cancellation Before the Trademark Trial and Appeal Board (TTAB): The USPTO proposes a rule amendment implementing the new ground for cancellation based on nonuse created by the TMA. Third parties can now seek cancellation of a registration for nonuse of a mark that has never been used in commerce. This ground for cancellation is available at any time after the first three years following registration.
  6. Letters of Protest: The TMA provided that the USPTO Director’s determinations on Letters of Protest are final and non-reviewable. Such determinations will also not prejudice any party’s rights in any other proceeding. The USPTO proposes rule revisions to add these provisions. These revised rules build on the letter of protest procedures published as a final rule in November 2020.
  7. Suspension of Proceedings: The USPTO proposes expanding suspension rules for applications and TTAB proceedings to include suspension for ex parte reexamination or expungement proceedings where applicable.
  8. Court Orders Concerning Registrations: The USPTO proposes codifying its procedures to require submission of certified copies of court orders canceling or affecting trademark registrations. The USPTO will not act on such court orders until the case from which the order issues is finally determined.

[1] A copy of the notice can be found here: https://www.federalregister.gov/documents/2021/05/18/2021-10116/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020.
[2] https://www.ipintelligencereport.com/2020/12/23/congress-passes-the-trademark-modernization-act/.