The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes (i.e., adjustments to the office action response period) won’t go into effect until December 1, 2022. The new regulations are summarized below.
Ex Parte Proceedings
The TMA created two new ex parte proceedings by which any third party (including the PTO director) can seek to challenge registrations for nonuse: Reexamination and expungement.
One of the TMA’s underlying legislative aims was to clean up the “clutter[ed]” register by removing registrations for marks not properly in use in commerce. These new proceedings offer efficient and less expensive alternatives to a cancellation proceeding before the Trademark Trial and Appeal Board (Board).
Any party (or the PTO director) can file a reexamination action to cancel some or all of the goods or services covered by a use-based registration if the trademark was not in use in commerce in connection with those goods or services before (1) the application filing date when the application was based on Section 1(a) (Use in Commerce), or (2) if the application was filed based on Section 1(b) (Intent to Use), the date the amendment to allege use was filed, or the deadline by which the applicant needed to file a statement of use, whichever is later. A reexamination proceeding must be initiated within the first five years of registration.
Similarly, an expungement action can be brought by any party (including the PTO director) seeking to cancel some or all of the goods and/or services from a registration based on the registrant never having used the trademark in commerce in connection with the relevant goods/services. An expungement proceeding must be initiated between the third and 10th year of registration. However, until December 27, 2023, an expungement action can be requested for any registration that is at least three years old, regardless of how long it has been registered.
Requirements for Ex Parte Petitions
The final rules detail the requirements for a petition for expungement or reexamination:
- A $400 fee
- The US trademark registration number of the registration being challenged
- The basis for the petition
- The name and contact information of the petitioner
- The name and contact information of the designated attorney, if any
- A list of the goods and services that are subject to challenge
- A verified statement of the facts, which should include details of the reasonable investigation of nonuse and a “concise factual statement of the relevant basis for the petition”
- Copies of the supporting evidence with an itemized index.
A reasonable investigation of nonuse will vary depending on the nature of the goods and/or services but “should focus on the mark disclosed in the registration and the identified goods and/or services, keeping in mind their scope and applicable trade channels.” Also, “[a]s a general matter, a single search using an internet search engine likely would not be considered a reasonable investigation.” The final rules provide examples of appropriate sources of evidence, including the registrant’s website, state and federal trademark records, websites and other publications where the goods/services are likely to be advertised or offered for sale and details regarding attempts to purchase the relevant goods/services. The verified statement should detail the dates that the searches were conducted, the sources that were searched and a description of what, if any, information the searches produced (even if that information is adverse to the petition).
The PTO director will review the petition, the petitioner’s evidence and the registration’s electronic record to determine whether to institute an expungement or reexamination proceeding. The director’s decisions are final and non-reviewable. If a proceeding is instituted, an office action will issue, requiring the registrant to provide evidence rebutting the prima facie case of nonuse. If the registrant’s response fails to establish use in commerce, the PTO will issue a final action, and the registrant will have three months to file a request for reconsideration or an appeal to the Board.
Office Action Response Timeline
Beginning December 1, 2022, the PTO will shorten the amount of time applicants/registrants have to respond to certain office actions. Previously, parties were given six months to respond to all office actions. Under the new regulations, parties must respond to office actions within three months or request a one-time three-month extension, which requires a $125 fee. The final rules state that the shorter timeframe does not apply to applications filed under Section 66(a), because such applications require additional processing through the World Intellectual Property Organization’s International Bureau.
Letters of Protest
The TMA codified the longstanding PTO letters of protest practice. This procedure allows third parties to submit evidence relevant to a mark’s eligibility for registration to the PTO during the application’s examination. Under the TMA, there is a two-month deadline by which the PTO must act on the submission, and the PTO director’s decisions regarding letters of protest are final and non-reviewable. The associated fee remains unchanged ($50).
Mistaken, False or Fraudulent Attorney Designations
The PTO clarified that any attorney designation made mistakenly or fraudulently will not be effective, and the attorney does not need to be formally withdrawn.
Court Orders Affecting Trademark Registrations
The final rules also codified the PTO’s longstanding practice regarding court orders affecting registrations. (See Trademark Manual of Examining Procedure § 1610.) A certified copy of the court order must be submitted before the PTO can act on it, and the PTO typically will not act until the case has been finally determined.