Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks – from the Registry and are now available for use. A summary of the changes follows:
- Ex Parte Expungement and Reexamination Proceedings: Any party, including the U.S. Patent and Trademark Office (USPTO) director, may petition to cancel (in whole or in part) a registration on the basis that the mark was never used in commerce (expungement) or was not in use in commerce as of a particular date (reexamination). A reasonable investigation into use is required, and a verified statement regarding the investigation must be included in the petition. The time frame during which to seek expungement is between three and 10 years from the date of registration, and the time frame to seek reexamination is within the first five years after registration. The filing fee for each of these proceedings is $400 per class.
- New Ground for Cancellation Before the Trademark Trial and Appeal Board (TTAB): Parties can now seek cancellation of a registration on the basis of expungement – that is, that the mark has never been used in commerce. This new ground for cancellation is available at any time after the first three years following registration, and it does not affect the existing nonuse and abandonment grounds for cancellation.
- Suspension of Proceedings: The final rule codifies the USPTO’s suspension rules for applications and TTAB proceedings to include suspension for ex parte reexamination or expungement proceedings where applicable.
- 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 has a deadline of two months to act on letters of protest, and it can continue charging a $50-per-letter fee.
- Court Orders Concerning Registrations: The final rule codifies the USPTO’s 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.
- Attorney Designations: If an attorney is mistakenly, falsely or fraudulently designated as the attorney of record, the USPTO will communicate only with the applicant. The attorney is not required to formally withdraw.
Not all proposed changes made the final cut after consideration of the comments elicited. The USPTO retained the current rule of automatic termination of an attorney’s representation when an application registers, ownership changes or an application is abandoned.
Finally, the implementation of some regulations – including the flexible response periods, which reduce the office action response period from six months to three months (excluding Section 66(a) applications), and allowing a single, three-month extension of time upon payment of a $125 (electronic filing) or $225 (paper filing) fee – is delayed until next year, Dec. 1, 2022. The flexible response periods require the USPTO to make significant changes to the examination process and its IT systems.