This is an informative alert to advise you of some U.S. Trademark Law changes going into effect in  December 2021. Some regulations implementing the Trademark Modernization Act of 2020 include the following changes of note:

  • Two new ex parte proceedings to cancel unused registered trademarks (Expungement and Reexamination proceedings) will provide an alternative to inter partes cancellation proceedings before the Trademark Trial and Appeal Board (TTAB). Petitions requesting institution of proceedings for Reexamination or Expungement will be accepted on or after December 27, 2021. Notably, the petitions may be filed anonymously. Presently, the U.S. government fee for filing a petition is $400 USD for each class of goods/services.
  • A new ground for inter partes cancellation before the TTAB (Expungement) goes into effect on December 18, 2021 – At any time after the first three years from the registration date, a petition for cancellation may allege that a mark has never been used in commerce as a basis for cancellation. Presently, the U.S. government fee for filing a petition is $600 USD for each class of goods/services.
  • Statutory authority has been provided for the longstanding “letter of protest” practice as of December 18, 2021, enabling third parties to submit evidence in a trademark application relevant to a ground of refusal. The U.S. government fee for filing a letter of protest is currently $50.00 USD.

Additional details regarding the above-noted changes can be found at:
https://www.uspto.gov/trademarks/laws/2020-modernization-act

Also of note, starting December 1, 2022, a shorter three-month response period for Office Actions (instead of the current six-month response period) will go into effect for all applications except for Madrid applications filed under section 66(a). A single three-month extension of time will be available to extend the shortened three-month response period.

OUR RECOMMENDATIONS 

We recommend that trademark owners review all registered U.S. trademarks as soon as possible to ensure their registered marks are used in the United States interstate commerce for all registered goods and/or services listed in their trademark registration. 

We also encourage trademark owners to review any business websites, marketing and other materials used in connection with the goods/services to determine if trademarks are displayed properly. 

If the registration is based on use in US commerce or a corresponding foreign registration, we recommend proactively filing a Section 7 amendment to delete any goods or services that are not currently in use from the registration. For International Registrations (Madrid Protocol extension of protection to the US), a request for limitation of some or all of the goods/services must be filed directly with WIPO International Bureau.  

We note that foreign-domiciled registrants must be represented before the USPTO by a qualified U.S. attorney. 

We are in the process of updating our fee schedule to reflect the new trademark procedures and fees. In the meantime, please do not hesitate to contact us with any questions or concerns.

Jorie L. Stroup

U.S. Patent & Trademark Attorney