Trademark Modernization Act: Impact on Applicants and Lawyers in 2022

The Trademark Modernization Act of 2020 (the TMA) provides new tools to clear away unused registered trademarks from the federal trademark register – unclutter the registry --  and the TMA should allow the United States Patent and Trademark Office (the USPTO) to process trademark applications more efficiently. The USPTO began implementing regulations in accordance with the TMA on December 18, 2021.

Practice Pointers for Trademark Lawyers

The TMA and USPTO provide protections for trademark lawyers, affirmation of time-honored practices, and more secure online filing processes:

• Attorney designations that are mistaken, false, or fraudulent —

An application that falsely, fraudulently, or mistakenly designates an attorney will not be effective; an attorney who is unknowingly designated does not need to formally withdraw from the application. Attorneys should diligently monitor filings made with the USPTO to look for fraudulent filings listing the attorney as “of record.”

• Court orders concerning registrations —

  The TMA codifies the USPTO’s long-standing procedures concerning action on court orders canceling or affecting a registration under 15 U.S.C. §1119; the USPTO requires submission of a certified copy of the court order and normally does not act on such orders until the case is finally determined.

• Identity verification for trademark filers —

  Effective April 9, 2022, identity verification will be required for USPTO.gov account holders to file through the Trademark Electronic Application System (TEAS) and TEAS international (TEASi); this is a one-time verification step to ensure a user’s identity and authenticate the user’s USPTO.gov account online.

• Third-party submissions during examination —

  The TMA still allows the longstanding USPTO “letter of protest” practice — allowing third parties to submit evidence to the USPTO, prior to registration, relevant to a ground for refusal in examination — but the TMA sets a two-month deadline for the USPTO to act on these submissions, authorizes USPTO to continue to charge a fee for them, and provides that the Director's decision on a letter of protest is final and non-reviewable.

• Post-Registration procedures —

  The TMA provides for new post-registration procedures including two ex parte proceedings, expungement and reexamination through the Trademark Trial and Appeal Board (TTAB):

  • Expungement proceeding — Any party may request the TTAB cancel some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services; such a proceeding must be requested between three and 10 years after the registration date, though a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit, until December 27, 2023.

  • Reexamination proceeding — Any party may request the TTAB cancel 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 on or before a particular, relevant date; this proceeding must be requested within the first five years after registration of the mark.

What the TMA Means for Trademark Application Filers

• Applications should process faster —

  • Three-month response period for office actions — Means applications will be processed more quickly. Beginning December 1, 2022, applicants (with the exception of Madrid Section 66(a) applicants) or registrants must respond within three months to either office actions/refusals issued during examination of an application or post registration office actions; one three-month extension can be requested for a fee of $125, but if the USPTO does not receive either the extension request or a response within the first three months, the application: will be abandoned; or the registration will be canceled; or the registration will expire.

  • New ground of expungement — If you find a registration cited against your application in an office action/refusal, you may request the cancellation of a registered trademark through the TTAB on the new ground of expungement. An expungement action may be available any time after the first three years of the mark’s registration date.

  • Digital trademark registration certificates starting in 2022 — Though an implementation date is uncertain, rollout of these certificates is expected by spring of 2022; once issued, the electronic registration certificate will be the official registration certificate. The move to electronic certificates will speed up the notification process on the final issuance of registrations. Trademark registrants will have the option to order paper “presentation” copies for a fee, or to order certified copies of their trademark registrations.

If you have any questions about the trademark application process, please telephone or text my office at (972) 244-3210, or send me a message.