In late 2020, the Trademark Modernization Act (TMA) was signed and included, among other things, two new and notable procedures. The two new procedures, expungement and reexamination, are aimed at reducing the number of trademarks which have been registered but have either never been used in commerce or have not been used in commerce before a relevant date.
Expungement involves making a request to “remove some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services.” United States Patent and Trademark Office, Trademark Modernization Act establishes new procedures, uspto.gov, https://www.uspto.gov/trademarks/laws/2020-modernization-act (last visited April 15, 2021). An expungement procedure must be brought between three to ten years after the registration of the mark.
A reexamination proceeding is directed toward marks that were not used in commerce with the listed goods or services on or before a particular relevant date ( i.e., applications filed under Section 1(b) Intent-to-Use). A reexamination proceeding must be brought within the first five years after the registration date. Both proceedings are ex parte meaning they are conducted without the presence of both parties. In this case, one party will request the proceeding, but the actual proceeding will take place between the Registrant and the USPTO.
Additionally, the TMA has provided a statutory basis for submitting letters of protest. While submitting letters of protest is a well-established practice, the TMA places a two-month deadline for the USPTO to act on the letters but also authorizes the USPTO to charge a fee for each submission. Finally, to assist trademark owners in federal court, the TMA also creates a uniform rule which establishes a rebuttable presumption of irreparable harm. The Act goes into effect on December 27, 2021.
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