On December 18, 2021, the U.S. Patent and Trademark Office (USPTO) rules implementing the Trademark Modernization Act of 2020 (TMA) went into effect. The first major overhaul of the Lanham Act since 1998, the TMA introduced new tools to remove unused trademarks from the Register and expedite the overall registration process. This client alert highlights certain key new procedures, deadlines, and standards under the TMA rules and their impact on brand owners.

Expungement and Reexamination Proceedings

The TMA rules implement two new ex parte mechanisms to cancel trademark registrations in whole or in part on the basis that the marks are not used in U.S. commerce:

1. Expungement. In an expungement proceeding, anyone may petition the USPTO to cancel all or part of the goods or services identified in a registration for a mark that has never been used in commerce. Until December 18, 2023, expungement may be requested for any registration at least three years old. Thereafter, expungement proceedings can be filed between three and ten years after issuance of a registration.
2. Reexamination. In a reexamination proceeding, anyone may petition the USPTO to cancel all or part of the goods or services identified in a registration if the mark was not in use for those goods or services as of the application date (for use-based applications) or the deadline to file a statement of use (for intent-to-use-based applications). Reexamination proceedings may be instituted during the first five years following the registration date. The USPTO Director also has limited discretion to initiate expungement and reexamination proceedings on its own.

To institute an expungement or reexamination proceeding, a petitioner must: (1) submit a verified statement with evidence demonstrating its "reasonable investigation" of the registrant’s use of the subject mark; and (2) remit a $400 filing fee per class of goods or services. To satisfy the "reasonable investigation" requirement, a petitioner must undertake “an appropriately comprehensive search … [of] reasonably accessible sources where evidence concerning use of the mark during the relevant time period on or in connection with the relevant goods and/or services would normally be found.” As evidence of an investigation, the USPTO may accept federal and state trademark records, marketing materials, internet websites and online media, private investigation materials and any other reasonably accessible source material.

If the USPTO Director determines there is sufficient evidence to establish a prima facie case of non-use, the Director will institute a proceeding by issuing an office action to the registrant. The registrant will have three months to respond to the office action and can extend the deadline by one month for a $125 fee. The Director must then decide whether the registration should be cancelled in whole or in part. Foreign registrants that obtained their registrations under Sections 44 or 66(a) can assert excusable non-use during the first five years of registration. Registrants may appeal any decision to the Trademark Trial and Appeal Board (TTAB).

These new mechanisms are intended to facilitate efficient removal of dead marks from the Register and clear the way for brand owners to register marks in use. They supplement the USPTO’s existing tools, which include cancellation for abandonment and the USPTO’s Post Registration Audit Program. Notably, there is no standing requirement to institute either proceeding, nor is it necessary for a petitioner to identify the real party in interest on whose behalf the petition is being filed.

Non-use as Ground for Cancellation Proceedings

In addition to the ex parte mechanisms discussed above, the TMA has created a new non-use ground for TTAB inter partes cancellation proceedings. This ground mirrors the ex parte expungement procedure. To demonstrate non-use, a petitioner must establish that a registration has never been used in commerce on or in connection with some or all of the goods or services recited in the registration. This ground for cancellation is available to interested third parties at any time after three years from the registration date. Unlike the ground of abandonment, for which a petitioner must establish that a mark’s use has been discontinued with intent not to resume use, in a non-use cancellation the registrant’s intent is irrelevant.

Shorter Office Action Response Period

One of the most discussed changes under the TMA is the new response deadline for trademark office actions. Effective as of December 1, 2022, the window for filing office action responses will be shortened from six to three months. Applicants will have the option to obtain one three-month extension for a $125 fee. Applications filed under Section 66(a) are exempt from the shortened timeframe.

Extensive lag times at the USPTO were the key motivation behind the shortened timeframes. In recent years, the USPTO has experienced record levels of trademark filings, many by non-U.S. applicants. This influx of filings and delays associated with the pandemic have substantially slowed the examination process; typical processing is now 12 to 18 months. The expectation is that shorter response times will expedite the overall registration timeline.

Codified Procedure for Letters of Protest

The TMA has also codified the USPTO’s letter of protest procedure. A letter of protest is a vehicle for any third party to submit evidence contesting the registrability of an application prior to or within thirty days following publication. Under the TMA, the USPTO Director must determine within two months after submission whether letter of protest evidence should be included in the application record. This new timing may be beneficial to protesters in their planning of broader enforcement strategies.

Takeaways

• It is more important than ever to exercise due diligence on the front end of trademark prosecution, including drafting an accurate description of goods and services, maintaining proper specimens, and ensuring the mark is in use for all goods and services as of the alleged date of first use. Failure to do so could expose brand owners to the new expungement and reexamination procedures.
• Non-U.S. applicants filing under Section 44—who may obtain registrations without demonstrating actual use in U.S. commerce—must be particularly attuned to the risks of non-use.
• Brand owners that lack standing to bring cancellation actions may have an alternative route to contest third-party registrations using the reexamination or expungement mechanisms.
• Trademark owners must ensure proper docketing of all deadlines to account for the TMA’s rule changes for office action responses. Your trademark counsel can assist!