NOTIFICATION FROM SHERIDAN ROSS P.C. – CHANGES IN U.S. TRADEMARK PRACTICE

The United States Patent & Trademark Office (“USPTO”) has a new set of regulations that are part of the agency’s implementation of the Trademark Modernization Act of 2020, and they represent significant changes to federal trademark procedures. The most notable additions include expungement and reexamination proceedings.  The most notable changes involve Letters of Protest and response periods for Office Actions.  The new regulations will go into effect later this month December 18, 2021 and December 27, 2021, with the exception of the change in the response periods for Office Actions – the change to response period will not take effect until December 1, 2022.

New Procedures – Effective December 27, 2021

The USPTO has added two new Petition based proceedings that provide faster, more efficient and less expensive options for parties who want to cancel or partially cancel registered trademarks.

  • Through an expungement proceeding, any party may request cancellation of some or all the goods/services in a U.S. Trademark Registration on the basis that the trademark has never been used in commerce.
    • An expungement may be filed against some or all of the goods/services listed in the registration.
    • A party must initiate this proceeding between three and ten years after the registration date, however, under an exception in place until December 27, 2023, a party may request expungement for a U.S. Trademark Registration at least three years old regardless of the ten-year limit.
    • An expungement proceeding would typically be filed against a U.S. Trademark Registration that was registered on the basis of a foreign registration or that was an extension of protection to the U.S. of an International Registration or Madrid Protocol filing.
    • The government fee is $400 per class.
  • Through a reexamination proceeding, any party may request cancellation of some or all the goods/services in a U.S. Trademark Registration on the basis that the trademark was not used in commerce in connection with some or all of the goods/services listed in the registration.
    • A party must initiate this proceeding must within the first five years after registration.
    • This proceeding may only be filed against a U.S. Trademark Registration that was registered on the basis of use in the U.S. and therefore would not be applicable to U.S. Trademark Registration that was registered on the basis of a foreign registration or that was an extension of protection to the U.S. of an International Registration or Madrid Protocol filing.
    • The government fee is $400 per class.

Changes to Existing Procedures – Effective December 18, 2021

The USPTO has made two modifications to existing procedures that will go into effect in December 2021, as follows:

  • Changes to Letters of Protest: The USPTO will change the period of review for letter of protest submissions from third parties. The USPTO has implemented a two-month deadline for the USPTO to act on Letters of Protest. Also, the USPTO Director’s decision on these letters is now deemed final and non-reviewable.
  • Addition of an expungement option to Trademark Trial and Appeal Board (TTAB) Cancellation Practice: In addition to the expungement petition proceeding discussed above, a party may request the cancellation of a U.S. Trademark Registration through the TTAB on the new ground of expungement, that is, that a registered trademark has never been used in commerce.  This ground is available at any time after the first three years from the registration date.

Changes to Existing Procedures – Effective December 1, 2022

The USPTO has made one modification to existing procedures that will go into effect in December 2022, as follows, and will apply to all Office Actions except Office Actions issued in a pending application in an extension of protection to the U.S. of an International Registration or Madrid Protocol filing:

  • A shorter three-month response period for office actions: Trademark applicants or registrants will now be required to respond within three months to office actions issued during examination or office actions issued post registration. For a $125 fee, parties may request a single three-month extension of time to respond. If parties are not able to submit responses to office actions within the allotted time, the application will be abandoned or the registration will be cancelled. This change will not take effect until December 1, 2022, and it will not apply to pending applications in an extension of protection to the U.S. of an International Registration or Madrid Protocol filing.

To learn more about these changes, you can see the USPTO’s post about them here.