Trademark Modernization Act Webinar Slides

The Trademark Modernization Act was signed on December 27, 2020, and will be more fully implemented by December 27, 2021. This Webinar discusses the Act and how brand owners should prepare.

On November 17, 2021 the USPTO issued its final rule setting forth the implementation plan, which varies somewhat from what was expected:
- The implementation date of the Act is December 18, 2021 for most procedures, with the flexible response times for Office Action responses beginning on December 1, 2022;
- The filing fee for an expungement or a re-examination petition was set at $400 per class

The final rule can be found at https://www.federalregister.gov/d/2021-24926.

Transcript

1. Trademark Modernization Act Kevin A. Thompson LEVIN GINSBURG Webinar November 10, 2021
2. Agenda • Trademark Modernization Act • 2 new ex parte processes available • Expanded letters of protest • New grounds for cancellation • Shorter response times to office actions • Other procedural changes in 2021/2022 • Revised fee structure • Deletion after filing but before acceptance • New version of the ID manual coming in early 2022
3. Trademark Modernization Act Public Law 116-260, Div. Q, Tit. II, Subtit. B, §§ 221-228 (Dec. 27, 2020)
4. Trademark Modernization Act Passed as part of an appropriations bill: Consolidated Appropriations Act, 2021 (Public Law 116-260, Subtitle B, Section 221) - Enacted December 27, 2020 - Will be fully implemented on December 27, 2021, with some specific elements being further delayed until June 27, 2022
5. Trademark Modernization Act • One provision is already effective as of December 27, 2020: The restoration or confirmation of the presumption of irreparable harm upon a violation of the Lanham Act There used to be a circuit split on the standard for injunctive relief in trademark infringement cases following the ruling from 2006 in eBay Inc. v. MercExchange. 547 U.S. 388. eBay eliminated a similar presumption of irreparable harm in patent cases.
6. Expanded Letters of Protest Any grounds for opposition or cancellation can now be the subject of a Letter of Protest. The fee of $50 remains as previously set.
7. New Grounds for Cancellation The mark has never been in use in US commerce Available after three years of registration
8. Ex Parte Expungement of Registrations A petition to expunge a registration, either in whole or in part, can be filed after 3 years of registration where there are specific goods or services listed in the registration for which the trademark has never been used in U.S. commerce. Petitioner is merely required to supply evidence of a “reasonable investigation” showing that the registered mark was never used for the goods and services identified in the petition. Registrant can respond with evidence of use or a reasonable explanation as to why the goods or services are not in use.
9. Ex Parte Expungement of Registrations This proceeding must be requested between three and ten years after the registration date. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.
10. What is a “reasonable investigation”? Appropriate sources of evidence and information for a reasonable investigation may include, but are not limited to: • State and Federal trademark records; • internet websites and other media likely to or believed to be owned or controlled by the registrant; • internet websites, other online media, and publications where the relevant goods and/or services likely would be advertised or offered for sale; • Print sources and web pages likely to contain reviews or discussion of the relevant goods and/or services; • Records of filings made with or of actions taken by any State or Federal business registration or regulatory agency; • The registrant's marketplace activities, including, for example, any attempts to contact the registrant or purchase the relevant goods and/or services; • Records of litigation or administrative proceedings reasonably likely to contain evidence bearing on the registrant's use or nonuse of the registered mark; and • Any other reasonably accessible source with information establishing that the mark was never in use in commerce (expungement), or was not in use in commerce as of the relevant date (reexamination), on or in connection with the relevant goods and/or services.
11. Ex Parte Re-Examination Petition can be filed within 5 years of registration Petitioner must have conducted a reasonable investigation into registrant’s use Allows for invalidation of a registered mark that was not used in U.S. commerce for some or all of the goods or services listed in the registration as of the “relevant date” in the application process. Fee - $600 per class.
12. Ex Parte Re-Examination The “relevant date” is defined as any of the following: 1. If filed based on use, the filing date for the application; 2. the filing date for an amendment claiming that the mark was currently in use in U.S. commerce, or 3. If filed based on intent-to-use, the deadline by which a statement of use was due to be filed. Sworn statements are required at each of these points.
13. Ex Parte Re-Examination The USPTO Director may institute proceedings without a petition, if the Director discovers information that supports a prima facie case that the trademark has: - Never been used in commerce with certain goods or services; - Not been used as of the particular relevant date as to particular goods or services
14. Ex Parte Re-Examination Procedure once instituted by the Director: - Examiner issues an Office Action - Registrant has two months to respond - USPTO makes a determination - Registrant has two months to request reconsideration or appeal to the TTAB.
15. Ex Parte Re-Examination Practice Tips Going forward, the dates of use must be carefully confirmed for all goods or services listed. Even inadvertent misstatements regarding use can result in cancellation.
16. Discretionary Shortened Office Action Response Times TMA rule: The Examiner can require, at their discretion, shortened response times, from 2 to 6 months. If needed, the Applicant can request additional time to respond USPTO implementation: Delayed until June 27, 2022. Three month Response period, for all cases except Madrid cases, with a single extension of 3 months available for $125.
17. Other USPTO Updates
18. January 1, 2021 Changes • Updated fee schedules • If goods need to be deleted after filing but before acceptance, such as during an audit, the fee is $250 per class.
19. January 1, 2022 – upcoming changes • New version of the NICE Classification system, 11th Edition, takes effect. The ID manual will be updated to reflect these changes.
20. Questions? Kevin Thompson LEVIN GINSBURG kthompson@lgattorneys.com 312 368 0100