Written by Alesha M. Dominique and Caen A. Dennis

On November 17, 2021, the United States Patent and Trademark Office (USPTO) issued its highly anticipated final rule, which amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020 (TMA).  Many parts of the final rule will go into effect on December 18, 2021, with other portions effective on December 1, 2022.  The final rule brings significant changes to federal trademark law procedures. The rule aims to ensure that the federal trademark register accurately reflects trademarks that are currently in use, and gives the USPTO the ability to move applications through the registration process more efficiently.

While we previously wrote about some of the changes here, a more detailed summary of the changes, as set forth in the final rule, is set forth below.

Ex Parte Proceedings to Cancel Unused Registered Trademarks.  Whether you are an individual, a small business, or a publicly traded company, the rule provides new tools to get rid of unused registered trademarks. Under the final rule, a party may, between three and ten years after the registration date of a trademark, petition the USPTO Director for an expungement proceeding requesting cancellation of some or all of the goods or services in a registration where the registrant has never used the trademark in commerce in connection with those goods or services.  Until December 27, 2023, an expungement proceeding may be requested for any registration at least three years old, notwithstanding the ten-year limit.  Expungement also is a new ground for cancellation through the Trademark Trial and Appeal Board, though the current cancellation grounds of nonuse and abandonment remain effective.

A party also may, under certain circumstances, petition for a reexamination proceeding requesting cancellation of some or all of the goods or services in a registration.  Such a petition may be filed where a trademark was not used in commerce in connection with the goods or services on or before a particular date.  For use-based applications, the relevant date is the application filing date.  For intent-to-use applications, the relevant date is the later of (i) the date that an amendment to allege use was filed; or (ii) the date that the deadline to file a statement of use expired.  Such a proceeding must be requested within five years after registration.

Notably, any person may file a petition requesting institution of an expungement or reexamination proceeding.  The identity of the real party in interest on whose behalf the petition is filed is not required; however, the Director has the authority to require this information in particular cases.  Foreign-domiciled petitioners must obtain U.S. counsel in order to file a petition.  Petitions requesting institution of proceedings for reexamination or expungement will be accepted on or after December 27, 2021. 

Letters of Protest.  There has been a longstanding practice allowing third parties to submit a letter of protest providing evidence in support of grounds for refusal to a trademark application prior to its registration.  The TMA has imposed new guidelines on this practice.  Now, there will be a two-month deadline for the USPTO to act on third party submissions, and the Director’s decision on the letter is final and non-reviewable.

Abbreviated Three-Month Response Period for Office Actions.  Regarding responses to office actions issued during the examination process or post registration of a trademark, as of December 1, 2022, applicants (excluding Madrid Section 66(a) applicants) and registrants must respond within three months.  Applicants and registrants may request one three-month extension of time to respond for a fee of $125. If responses are late, parties risk abandonment, cancellation, or expiration of their trademark. 

Additional Changes.  The mistaken, false, or fraudulent designation of an attorney will not be effective; however, the USPTO will not require the designated attorney to formally withdraw.  The final rule also codifies the USPTO’s requirement for a certified copy of a court order cancelling or affecting a registration.

For more detail regarding the TMA changes, read the final rule published rule here.