Copyright 2021 Shami Messinger PLLC

The Trademark Modernization Act, TMA  was signed into law on December 27, 2020, and will be implemented by December 27, 2021. Some items for trademark owners to be aware of are:

Flexible response periods for office actions

Trademark Examining Attorneys will have the option to set office action response periods that are shorter than the current six-month response time but not less than 60 days. While response periods may be shorter, the applicant will have the option to request extensions to have the full six months. The number, length and fee for extensions of time will be established by the USPTO by rule.

Two new ex parte post-registration proceedings to cancel unused trademarks and a new ground for a TTAB cancellation proceeding

The new proceedings will allow applicants or registrants to request that the USPTO remove or reexamine a registration for a trademark that either has never been used in commerce at all or was not used in commerce before a certain time. The TTAB cancellation is similar to the expungement claim that a registered trademark has never been used in commerce, but may be brought at any time after three years from registration. The new procedures for prosecution and cancellation are designed to help bona fide trademark owners overcome fraudulent foreign trademark registrations.  

Third-party submissions during examination

The new legislation will allow third parties to submit evidence into the record of an application if the evidence is tied to a particular ground for refusal. There will be a two-month deadline for the office to act on these submissions and the USPTO’s decision on whether to include the evidence in the application record will be final and non-reviewable. The USPTO issued rules setting out procedures and a $50 fee for these submissions that went into effect on January 2, 2021.

Stephanie Semler