Earlier this month, the United States Patent and Trademark Office (USPTO) issued a notice of regulatory proposal to implement the provisions of the Trademark Modernization Act (TMA), which Congress passed in December 2020. The public has until July 19, 2021 to comment on the proposed regulation before its implementation. The proposed rules create new non-use cancellation procedures, shorten response times to office actions, and expand USPTO protest letter procedures, among other changes. These and other rule changes are summarized below. We encourage all practitioners to review the notice in detail and provide feedback.
- Ex Parte Cancellation and review procedure: To address the issues of fraudulent filings and continued registration of trademarks that are not properly used in commerce, the USPTO is proposing rules implementing the new ex part expungement and review procedures created by the TMA. These proceedings may be initiated by third parties or the Director of the USPTO to challenge whether a registrant has used his trademark in commerce. Details of the proposed procedures for these procedures can be found in the notice.
- Estoppel and pending proceedings: The USPTO proposes rules on estoppel and the prohibition of co-pending proceedings involving the same registration and the same products and / or services for the new expungement and reconsideration proceedings. Following closure, the expungement or review proceedings can no longer be initiated for the same products and / or services at issue in the original proceedings.
- Lawyer recognition: The USPTO proposes to end automatic termination of legal representation when an application is registered, ownership changes, or an application is abandoned. Under the proposed rule, the USPTO would continue to recognize the plaintiff’s or registrant’s attorney as its representative until the owner revokes the appointment or the attorney withdraws the representation. The performance will continue even after the abandonment of an application or the cancellation of a registration.
- Flexible response times: The response time to the action of the office is currently set at six months. The TMA offers flexibility in setting response times for office actions from 60 days to six months with extension options of up to six full months. The USPTO is proposing to change the Office response times to three months for Sections 1 and 44 requests. Applicants may request a single three-month extension upon payment of a fee of $ 125 for requests under Articles 1 and 44. extension filed electronically. But for requests under section 66 (a), the time limit for responding to the action of the office will remain at six months from the issuance of the action of the office. The USPTO is considering two alternatives to this proposal and is seeking comments on all three options.
- New ground for non-use for annulment before the Trademark First Instance and Appeal Board (TTAB): The USPTO is proposing a rule change implementing the new non-use ground for cancellation created by TMA. Third parties can now request the cancellation of a registration for non-use of a mark that has never been used in commerce. This reason for cancellation is available at any time after the first three years following registration.
- Protest letters: The TMA provided that the decisions of the Director of the USPTO on the protest letters were final and not subject to review. Such determinations will also not infringe the rights of a party in any other proceeding. The USPTO is proposing rule revisions to add these provisions. These revised rules build on the letter of complaint procedures published as a final rule in November 2020.
- Suspension of the proceedings: USPTO proposes to expand suspension rules for TTAB applications and procedures to include suspension for ex part review or expungement procedure, if applicable.
- Court orders regarding recordings: The USPTO proposes to codify its procedures to require the submission of certified copies of court decisions voiding or affecting trademark registrations. The USPTO will not act on such court orders until the case from which the order is finally determined.
 A copy of the notice is available here: https://www.federalregister.gov/documents/2021/05/18/2021-10116/changes-to-implement-provisions-of-the-trademark-modernization-act-of-2020.