On December 18, 2021, the Trademark Modernization Act of 2020 ("TMA") went into effect, creating new procedures for removing unused trademarks from the federal trademark register and updating existing trademark law procedures. The TMA clears the path for legitimate businesses to register their marks by cleaning out the federal trademark register and giving the United States Patent and Trademark Office ("USPTO") the ability to expedite the registration process. Brand owners who are not using their trademarks in commerce (in all of such marks' registered classes) need to be aware of the new ways their marks may be canceled by the USPTO.
New Trademark Cancellation Procedures
Under the TMA, two new trademark cancellation proceedings have been added: the Expungement Proceeding and the Reexamination Proceeding.
Expungement Proceeding. Anyone may initiate an expungement proceeding by requesting "cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services." Generally, the expungement proceeding may only be requested between the 3rd and 10th year after a mark's registration date. However, until December 27, 2023, the 10-year limit on filing will be suspended. During this time, anyone may file to commerce an expungement proceeding against any unused mark provided that the mark at issue has been registered for over 3 years.
Reexamination Proceeding. Anyone may initiate a reexamination proceeding by requesting "cancellation of some or all of the goods or services in a use-based registration on the basis that the subject trademark was not in use in commerce with those goods or services on or before a particular relevant date." A mark's filing date is the "relevant date" for trademark applications that were submitted on a use-in-commerce basis. For applications filed on an intent-to-use basis, the "relevant date" is the later of the statement of use's filing date or the expiration of the deadline for filing a statement of use. A reexamination proceeding must be requested within 5 years after registration.
To institute either proceeding, a person must submit a petition to the USPTO Director. The petition must contain a verified statement that establishes that a reasonable investigation was conducted into the mark's use, together with a concise, factual basis for the petition. In addition, the petition must include sufficient evidence to substantiate the mark's nonuse in commerce. For each class of good or service for which cancellation is requested, the petitioner must pay a $400 fee.
Changes to Existing Trademark Law Procedures
The TMA amended various trademark laws. Of special importance, the time to respond to USPTO Office Actions was shortened to 3 months (from 6 months), with a single 3-month extension allowed. The fee for such an extension is $125. The 3-month response period applies to Office Actions issued during an application's examination and after a mark's registration (e.g., renewals). Please note that if no response is filed, the application/registration will be deemed abandoned/canceled. The 3-month Office Action response period will not take effect until December 1, 2022.
Additionally, the TMA codified a few long-standing USPTO practices into federal trademark law. First of note, the TMA codified the USPTO letter-of-protest procedure. During the initial examination of an application, third parties (for a fee) may submit evidence relevant to grounds for refusal of a trademark's registration (i.e., a letter-of-protest) to the USPTO. The USPTO has 2 months to act on such submissions, and its decision on a letter is final and non-reviewable. Another interesting addition worth mentioning is that the TMA has codified the USPTO practice of complying with court orders that cancel or affect a trademark registration provided that such courts submit certified copies of their orders to the USPTO.
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