November 17, 2021
Brian Winterfeldt and David Rome
Advisory
Advisory
Advisory

USPTO Issues Final Rule Implementing the Trademark Modernization Act

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New rules effective December 18, 2021 have been issued by the United States Patent and Trademark Office, which implement the Trademark Modernization Act of 2020. As of that date, the new ex parte cancellation mechanisms will be available. The Office has made several changes from its earlier proposals in its Notice of Proposed Rulemaking, which we reported when it issued in May. These changes include the following:

Flexible Office Action Responses 

  • Flexible Office action response periods will be effective December 1, 2022. This is delayed from earlier suggested June 2022 effective dates.
  • Applicants and Registrants will have three months to respond to Office actions, except for applicants under Section 66(a) (i.e. Madrid Protocol), which will continue to have a six-month response period. This slightly modifies the first of three proposed alternatives for “flexible” response periods.
  • Applicants and Registrants will have a single three-month extension of time to respond to Office actions for a US $125 fee, except applicants under Section 66(a) (i.e. Madrid Protocol) will not have the option to extend their initial six-month period. This slightly modifies the first of three proposed alternatives for “flexible” response periods.

Ex Parte Cancellation

  • The per class fee for petitions for ex parte cancellation will be US $400. This is reduced from $600 in the proposed rules.
  • Respondents in ex parte cancellations will have three months to respond to Office actions. This is increased from two months in the proposed rule.
  • Respondents in ex parte cancellations will have a single, one-month extension of time to respond to the initial Office action (but not the second, final Office action) for a US $125 fee. This was not in the proposed rule.
  • The Examiner in an ex parte cancellation will have the option to issue a deficiency letter to respondents offering thirty days to cure formal defects in substantially complete responses (which does not extend appeal deadlines). Comments were solicited on this topic, but it was not included in the proposed rule.
  • The Office will not audit the subsequent declaration of use following a default in an ex parte cancellation action. Comments were solicited on this topic, but it was not included in the proposed rule.

Attorney Recognition

  • False, fraudulent or mistaken designations of representatives will be ineffective, but other changes to attorney recognition have been removed. Contrary to the proposed rule, attorney recognition will still lapse following registration or abandonment of an application, acceptance of a declaration of use or cancellation of a registration.

The changes don’t substantially impact the analysis in our earlier World Trademark Review article on the TMA or the trainings that we have had several opportunities to host in recent months, but do clarify some of the issues that had remained open. Please reach out to us if you would like to discuss these new rules or other USPTO matters in more detail. We look forward to continuing to provide you with updates on key trademark developments.

For further information regarding the content of this article, or to discuss this or other intellectual property matters, please contact any of the following Winterfeldt IP Group team members:

Brian Winterfeldt, brian@winterfeldt.law, +1 202 903 4422

David Rome, david@winterfeldt.law, +1 202 759 5833

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