Trademark Law Update: The Trademark Modernization Act
In March 2020, Congress passed the Trademark Modernization Act of 2020 (“Trademark Modernization Act”). Depending on which side you sit on, this was either a great step forward or backward for trademark owners. If nothing else, this tightens up the practice of registering and keeping registered trademarks; and, aims to prevent those who are merely claiming rights to goods or services which they are not actually providing which may prevent other rightful users from obtaining protection.
As a result of the Trademark Modernization Act, the United States Patent and Trademark Office (U.S.P.T.O.), the government agency responsible for administering registered trademarks in the U.S., have instituted proposed rulemaking related to these changes. These suggested alterations include ex parte proceedings to cancel unused registered marks which could be a way to clear out some inappropriate registrations. Expungement proceedings are also proposed which would allow third parties to request the cancellation of some or all of the goods and/or services covered by an existing registration when the owner is not actually using the mark for the specified goods or services. Third parties may be able to request a re-examination proceeding under the proposed new procedures. That will subject an existing trademark holder to an inspection regarding their actual mark usage. This includes an expansion to permit interested parties to file Letters of Protests on additional grounds than previously existed, including for conflicting prior trademark uses as well as introducing evidence that a mark is not actually in use for the identified goods or services. Finally, under the proposed rules, “applicants (excluding Madrid Section 66(a) applicants) and registrants will be required to respond to office actions within three months.” That means that the response period to an Office Action Letter will be shortened from six months to three months which requires an owner to quickly respond to prevent the loss of their existing application or registration.
These new procedures could go into effect before the end of the year. This reminds everyone to be careful of the claims made in trademark applications and to avoid fiction when dealing with the U.S.P.T.O. This is especially true when claiming a brand in goods or services that an owner is not actually using or intending to use as these could cause an existing application or registration to be cancelled or otherwise prevented.
This article is not intended as legal advice, as an attorney specializing in the field should be consulted.
(C) 2021 The Jacobson Firm, P.C.