On December 18, 2021, regulations implementing the Trademark Modernization Act of 2020 (“TMA”) went into effect.
By amending the Trademark Act of 1946 (Lanham Act), individuals, businesses, and the United States Patent and Trademark Office (USPTO) now have new tools at their disposal to clear unused trademarks and service marks (hereinafter “marks”) from the Principal/Supplemental Registers and the USPTO can move mark applications through the registration process more efficiently. In relevant part to trade associations and other establishments interested in any part of trademark regulation in the U.S., the following major updates have been made through these regulations:
- Provides two useful ways that any person may challenge applications and registrations for non-use in U.S. commerce
- Ex Parte Reexamination Proceedings: Used to challenge marks improperly used in commerce (proceeding must be requested between 3-10 years after the registration date); and
- Ex Parte Expungement Proceedings: Used to challenge marks never used in commerce (proceedings must be requested within 5 years after registration).
- Restores the rebuttable presumption (amending Section 34 of the Lanham Act) of irreparable harm in jurisdictions that have dismissed it. This means that a plaintiff would not have to affirmatively demonstrate irreparable harm to secure injunctive relief. This is notable for trademark litigation, as this will increase a competing brand owner’s chance of successfully obtaining injunctive relief.
- Includes a new ground for cancellation based on “non-use” or “no bona fide use in commerce.” This new ground for cancellation is not time barred 5 years post-registration, but rather may be brought at any time after 3 years post-registration.
These changes are meant to bring more stability, security, and ease to governing law. Businesses and individuals may want to consider whether utilizing the new TMA procedures or seeking injunctive relief as an enforcement measure is right for them, based on practicality, cost, and other considerations. Those who have registered marks will want to ensure that they have obtained and are saving evidence of the use of each product and service listed in an application, registration, and/or renewal file in case there is a need to defend against expungement or reexamination in new proceedings.
More information can be found here on the USPTO website. Again, the TMA took effect on December 18, 2021, except for the implementation of the shorter response period for Office Actions that will go into effect on December 1, 2022. Petitions requesting institution of proceedings for reexamination or expungement are now accepted since December 27, 2021.
Please contact us if you have any questions or for further legal advice.