Property/Science & Technology Law USPTO Ushers in the Last Round of Changes Under the TMA

BY DAVID DIAMOND

This past December, the U.S. Patent & Trademark Office (USPTO) implemented the latest changes to trademark practice pursuant to the Trademark Modernization Act of 2020 (TMA). As one of the most substantial trademark legislation since the Lanham Act, the TMA introduces significant changes to trademark practice, including a rebuttable presumption of irreparable harm in trademark litigation, new proceedings for cancelling trademark registrations for nonuse, and shortened response times to USPTO office actions during a trademark prosecution.

Irreparable Harm Presumption

To resolve a circuit split over whether irreparable harm can be presumed for injunctive relief in trademark claims, the TMA codifies a rebuttable presumption of irreparable harm that applies (i) upon the finding of a Lanham Act violation in the case of a permanent injunction, or (ii) upon the finding of a likelihood of success on the merits for a Lanham Act violation in the case of a preliminary injunction or temporary restraining order.

Nonuse Proceedings

The TMA also introduces new proceedings for cancelling a trademark registration due to failure to use the mark in commerce: ex parte reexamination and ex parte and inter partes expungement.

Reexamination determines whether a registered mark was used in commerce for particular goods or services included in the registration as of the filing date of applications under Section 1(a) of the Lanham Act (i.e., “use-based” applications) or the later of the filing date of an amendment to allege use or the expiration of time for filing a statement of use for applications under Section 1(b) of the Lanham Act (i.e., “intent-to-use” applications). Only trademark registrations issued under Section 1 of the Lanham Act

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Expungement determines whether a registered mark has ever been used in commerce for particular goods or services included in the registration. Any registered mark is eligible for ex parte or inter partes expungement after its third anniversary of registration until December 27, 2023, after which time a registered trademark is eligible for ex parte expungement only between the third and tenth anniversaries of registration. Reexamination and expungement proceedings may be instituted ex parte by the USPTO on its own initiative or by third party petition, and expungement claims may also be instituted through an inter partes cancellation proceeding before the Trademark Trial and Appeal Board.

The TMA requires petitions for ex parte reexamination or expungement to identify the registration being challenged, identify each good or service in the registration being challenged, include verified statements setting forth the elements of the reasonable investigation conducted by the petitioner to establish nonuse by the relevant date, any supporting facts and evidence, and a fee. The TMA also includes an estoppel provision that exempts challenged goods and services of a registration from subsequent reexamination and expungement proceedings under certain conditions. The USPTO implemented regulations for these proceedings in December 2021, which, among other things, set the petition fee at $400 per class of goods or services challenged, imposed no standing threshold for petitioners, and allowed threemonth response periods for registrants to rebut challenges, extendable by one month. The USPTO’s procedures for these new proceedings can be found in Part 2 of Chapter

37 of the Code of Federal Regulations and Section 1716 of the USPTO’s Trademark Manual of Examining Procedure.

Office Action Response Periods

Prior to the TMA, response periods to USPTO office actions were uniformly six months. The TMA allows the USPTO to shorten the response period to as little time as 60 days, provided that the response periods be extendable if the USPTO chooses to shorten.

In November 2021, the USPTO issued its regulations for this TMA provision, under which response periods to office actions issued for applications filed under Section 1 or Section 44 of the Lanham Act (i.e., the majority of applications filed by U.S. applicants) are shortened to three months, extendable for an additional three months. Notably, response periods for office actions issued for applications filed under Section 66 of the Lanham Act (i.e., Madrid Protocol applications) remain unchanged at six months. The USPTO implemented the shortened response periods for pre-registration office actions on December 3, 2022. Shortened response periods for post-registration office actions will go into effect on October 7, 2023.

Seasoned trademark practitioners are likely well aware of the changes ushered in by the TMA, but those who only infrequently intersect with trademark law would do well to review the TMA and the USPTO’s related regulations next time a trademark matter arises, since the landscape now looks different than in years past. HN