Trademark Modernization Act: Considerations For Expungement And Reexamination Proceedings

Published date25 May 2022
Subject MatterIntellectual Property, Trademark
Law FirmPanitch Schwarze Belisario & Nadel
AuthorMr Steven D. Lustig

The Trademark Modernization Act became effective on Dec. 18, 2021. By now, practitioners have been bombarded by vast numbers of articles that review the changes made by this law. The purpose of this article, however, is to discuss practical considerations when pursuing the new ex parte expungement and reexamination proceedings.

The legal requirements for successful expungement and reexamination proceedings are a high bar. So, care must be taken when pursuing these actions.

Brief Discussion of Changes to Existing Law

The Trademark Modernization Act (TMA) made several changes to existing U.S. trademark law. The USPTO has outlined these changes here: https://www.uspto.gov/trademarks/laws/2020-modernization-act. The following is a brief list of the changes that are receiving comparatively less attention:

  • Office Action Response Periods
    • Beginning Dec. 1, 2022, responses to official actions will be due three months from the date of issue, instead of six months Three-month response deadlines can be extended another three months upon the payment of a fee.

Note, however, that this change will not apply to Madrid Protocol applications.

  • Letters of Protest
    • The procedure for submitting letters of protest will now be formal and pursuant to express statutory authority.
  • Court Orders Concerning Registrations
    • The USPTO will rectify the register by acting on court orders cancelling or affecting a registration when a certified copy of the court order is submitted. Action will be taken when the court case is finally determined.
  • Nonuse/Expungement Ground for Cancellation Before the TTAB
    • For those who would prefer an inter-partes proceeding, and that have standing to bring a cancellation, the Trademark Trial and Appeal Board (TTAB) will now allow petitioners to allege that a mark has never been used in commerce as a ground for expungement/cancellation.

Ex Parte Expungement and Reexamination Proceedings

We now turn to the TMA changes that are receiving the most attention: Ex parte expungement and reexamination proceedings. These new proceedings are supposed to provide more efficient, and less expensive alternatives to contested inter-partes proceedings at the TTAB.

However, based upon experience, these proceedings are not proving to be much faster-at least initially. Of five petitions for expungement that this author filed in January 2022, none have been acted upon as of late March. Contrast this to a TTAB scheduling order that is transmitted to a respondent...

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