New Rules to take effect under the Trademark Modernization Act of 2020

Jeb Burton

Managing Shareholder, Estate, Tax and Business Law, The Burton Law Firm

The United States Patent and Trademark Office (USPTO) has adopted final rules that implement provisions of the Trademark Modernization Act enacted on December 27, 2020. Most of the rules will become effective on December 18, 2021. Highlights of the new rules include streamlined procedures for canceling registrations due to nonuse. The underlying policy for these new procedures is to “clean up” the USPTO registration rolls by removing registrations of marks that are not being “used in commerce.” These new regulations are designed to provide efficient and less expensive alternatives to the traditional proceedings before the Trademark Trial and Appeal Board for cancellation of a registration. A party utilizing these new procedures (known as “reexamination” and “expungement”) will need to allege a certain lack of use of the mark in question and request the USPTO to institute an expungement or reexamination proceeding. If the USPTO decides to initiate a proceeding, the registrant will be allowed an opportunity to submit evidence showing use of the mark, in rebuttal of the alleged nonuse. Ultimately, the proceedings could result in the registrant’s loss of registration rights if the registrant is not able to submit appropriate evidence of use.

The new rules implement formalized procedures for the USPTO’s handling of “letters of protest,” which letters allow third parties to submit evidence in opposition to an application for registration during the examination stage.

Finally, the new rules shorten the time period in which applicants/registrants have to respond to USPTO office actions. Currently, one has 6 months to respond to an office action. Starting December 1, 2022, the response time will be shortened to 3 months. (However, a one-time three-month extension may be requested upon payment of a $125 fee.)

For more information, email the Burton Law Firm at [email protected]