USPTO Implements Trademark Modernization Act | BakerHotelier


Earlier this month, some regulations implementing the Trademark Modernization Act (TMA) came into effect. According to the final rule, the new tools are primarily aimed at removing “dead wood” – i.e. unused trademarks – from the registry and are now available for use. Here is a summary of the changes:

  1. Ex parte delisting and reconsideration procedure: Any party, including the Director of the United States Patent and Trademark Office (USPTO), may seek cancellation (in whole or in part) of a registration on the grounds that the mark has never been used in commerce ( canceled) or has not been used in commerce as of a specific date (re-examination). A reasonable investigation into the use is required, and a verified statement regarding the investigation must be included in the request. The period within which to request cancellation is between three and 10 years from the date of registration, and the period for requesting a review is within the first five years of registration. The filing fee for each of these procedures is $400 per class.
  2. 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, i.e. the mark has never been used in commerce. This new cancellation reason is available any time after the first three years of registration, and it does not affect existing non-use and abandonment cancellation reasons.
  3. Suspension of proceedings: The final rule codifies the USPTO’s suspension rules for TTAB applications and proceedings to include suspension for ex parte reconsideration or expungement proceedings, as appropriate.
  4. Letters of protest: The TMA has provided that the USPTO Director’s decisions on protest letters are final and not subject to review. Such determinations will also not prejudice the rights of the parties in any other proceeding. The USPTO has two months to act on protest letters and may continue to charge a fee of $50 per letter.
  5. Court orders regarding registrations: The final rule codifies USPTO procedures for requiring the submission of certified copies of court orders voiding or affecting trademark registrations. The USPTO will not act on these court orders until the case giving rise to the order is finally determined.
  6. Attorney Designations: If an attorney is mistakenly, falsely, or fraudulently named as attorney of record, the USPTO will only contact the applicant. The lawyer is not required to formally withdraw.

Not all of the proposed changes were finalized after reviewing the feedback received. The USPTO retained the current rule of automatic termination of attorney representation when an application is registered, ownership changes, or an application is abandoned.

Finally, the implementation of certain regulations – including flexible response times, which reduce the office’s response time for action from six months to three months (excluding requests under Article 66 ( a)), and allowing a single three-month extension of time after payment of a fee of $125 (electronic filing) or $225 (paper filing) – is postponed until next year, December 1, 2022. flexible responses require the USPTO to make significant changes to the examination process and its computer systems.


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