The Trademark Modernization Act of 2020 (TMA) was signed into law on
December 27, 2020, and portions of it will take effect on December 27, 2021.[1] It will give
individuals, businesses, and the U.S. Trademark Office new tools to address
trademark filings that are based on inaccurate claims of use in commerce.[2]
These mechanisms are expected to be faster and less expensive alternatives to contested opposition or cancellation proceedings before the Trademark Trial and Appeal Board.
- Expungement: This new procedure involves a petition to remove some or all of the goods or services in a registration on the basis that the registrant never used the trademark in commerce with those goods or services. This proceeding must be requested between three and ten years after a registration issues. However, until December 27, 2023, an expungement petition can be filed against a registration that issued more than ten years ago. The filing fee is $400 per class of goods or services.
- Reexamination: This new procedure involves a petition to remove some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services when (1) the application was initially filed based on use in commerce; or (2) if the underlying application was filed based on intent-to-use, then the later of the date that an amendment to allege use was filed or the expiry date for filing a statement of use. This procedure must be requested within five years from registration. The filing fee is $400 per class of goods or services.
- Letters of protest: Letters of protest may currently be submitted regarding pending applications, but the TMA expands the letter of protest so that an interested party will be able to submit evidence relating to any ground on which registration can be refused, including that the application is not in use for goods or services identified in the application. The filing fee is $50.
Takeaway for trademark owners: The goal of the TMA is to clear the trademark register of “deadwood” registrations improperly obtained or registrations for trademarks not currently in use. This is expected to free up the register for those who are legitimately using their trademark. This means that trademark owners will have new tools to protect their brands but should also be aware that their applications and registrations may now be vulnerable to new challenges from the Trademark Office or third parties, including overzealous competitors. These changes make it more important than ever to review your trademark portfolio and delete any goods or services not in use. We are happy to review your portfolio with you.
[1] Trademark Modernization Act of 2020 as incorporated in Consolidated Appropriations Act, 2021 (Public Law 116-260, Subtitle B, Section 221), available at https://www.congress.gov/116/cprt/HPRT42770/CPRT-116HPRT42770.pdf#page=2606.
[2] USPTO Implements the Trademark Modernization Act, available at https://www.uspto.gov/trademarks/laws/2020-modernization-act.