USPTO Implements Trademark Modernization Law | Baker
Earlier this month, some regulations implementing the Trademark Modernization Act (TMA) entered into force. Speak final rule, the new tools are primarily aimed at removing “deadwood” – meaning unused trademarks – from the registry and are now available for use. Here is a summary of the changes:
- Ex parte expungement and review procedure: Any party, including the Director of the United States Patent and Trademark Office (USPTO), can request the cancellation (in whole or in part) of a registration on the grounds that the mark has never been used in the trade (write-off) or was not used in trade as a particular date (review). A reasonable investigation of the use is required, and a verified statement regarding the investigation should be included in the petition. The deadline for requesting deregistration is between three and 10 years from the date of registration, and the deadline for requesting a review is within the first five years after registration. The filing fee for each of these procedures is $ 400 per class.
- New ground for annulment before the Trademark Court of First Instance and Appeal (TTAB): Parties can now request the cancellation of a registration on the basis of cancellation, i.e. the mark has never been used in commerce. This new ground for cancellation is available at any time after the first three years after registration, and it does not affect existing grounds for cancellation of non-use and abandonment.
- Suspension of the proceedings: The final rule codifies the USPTO stay rules for TTAB applications and proceedings to include stay for ex parte review or expungement proceedings, where applicable.
- Protest letters: The TMA provided that the decisions of the Director of the USPTO on the protest letters were final and not subject to review. Such determinations will also not infringe the rights of a party in any other proceeding. The USPTO has two months to act on protest letters, and it may continue to charge a fee of $ 50 per letter.
- Court orders regarding recordings: The final rule codifies the USPTO’s procedures for requiring the submission of certified copies of court orders voiding or affecting trademark registrations. The USPTO will not act on such court orders until the case from which the order is finally determined.
- Appointments of lawyer: If an attorney is mistakenly, falsely, or fraudulently appointed as a lawyer of record, the USPTO will only contact the claimant. The lawyer is not required to formally withdraw.
Not all of the proposed changes were finalized after reviewing the comments raised. The USPTO has retained the current rule of automatic termination of legal representation when an application is registered, ownership changes, or an application is abandoned.
Finally, the implementation of certain regulations – including flexible response times, which reduce the response time to office actions from six months to three months (excluding requests under Section 66 (a )), and authorizing a single extension of three months upon payment. a fee of $ 125 (electronic filing) or $ 225 (paper filing) – is deferred to next year, December 1, 2022. Flexible response times force the USPTO to make significant changes to the filing process. review and its computer systems.