May 18, 2021
Brian Winterfeldt and David Rome

USPTO Rulemaking on Trademark Modernization Act

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The public has until July 19, 2021 to comment on the United States Patent and Trademark Office’s Notice of Proposed Rulemaking implementing the Trademark Modernization Act as well as several unrelated but important changes to Office practice. Most are intended to improve accountability and protect the integrity of the trademark register, but to do so must impose substantial new burdens and costs on both trademark owners and practitioners.

Most of the impacted subjects are summarized very briefly below, but we encourage interested parties to review the Notice itself. Please note that we will also be holding a webinar in early June to discuss the Notice and its implications in more detail, and will be distributing the invitation shortly for this event.

  • New Ex Parte Reexamination and Expungement Proceedings: These proceedings will allow Office, upon either a relatively inexpensive third party petition or the Director’s initiative, to remove from registrations categories of goods or services for which a mark has not been used in commerce or was not used as of an allegation of use. The Office is considering, among other things, the fees, requirements and procedures for instituting these proceedings, the means by which registrants may overcome them and the specifics of how decisions might be reviewed.
  • New Shortened, Extendable Office Action Response Deadlines: The Office will no longer be limited by statute to six month Office action response periods, although six months must be available by extensions for which the Office may charge a fee. The Office is contemplating multiple alternative systems with initial response times as short as two months and extension fees of as much as $150 with distinctions made based on the grounds of the refusal, the basis of the application and the timing of the response.
  • New Non-Use Cancellation: This new ground for cancellation provides an arguably lower bar to cancellation in inter partes proceedings for marks that have not been used in the United States within three years of registration.
  • Recognition of Attorneys and Substitution of Counsel: The Office is substantially changing the conditions under which attorneys will be recognized and how they may be substituted following abandonment or registration of an application, acceptance of a declaration of use or expiration or cancellation of a registration. The proposed change will align the role of an attorney as correspondent, which endures, with their recognition as counsel, which does not. This means that an existing attorney will need to withdraw or a client will need to appoint counsel; an attorney may not simply file an appropriate submission after one of the aforementioned events and be automatically recognized.
  • Suspension for Co-Pending Proceedings: The Office is expanding the language of its rules concerning suspension of applications and Trademark Trial and Appeal Board proceedings to permit suspension for ex parte reexamination or expungement where applicable. This will be particularly important for parties that may be contemplating coordination of both ex parte and inter partes action against a single registration.
  • Letter of Protest Procedures: The office formalized its letter of protest procedures in November, 2020, but seeks to expand those to reflect the additional statutory provisions in the subsequent Trademark Modernization Act specifying that decisions on letters of protest are not reviewable and shall not prejudice any party in subsequent proceedings.

Please reach out to us if you would like to discuss the Notice or other USPTO matters in more detail, or if we may assist you with preparing public comments in response to the Notice. 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,, +1 202 903 4422

David Rome,, +1 202 759 5833

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