Although certainly not implied from the title, the Consolidated Appropriations Act of 2020 contains the most significant changes to the Lanham Act in several decades in the form of the Trademark Modernization Act (TMA). The TMA became law on December 27, 2020, and a majority of the provisions in the TMA will take effect on December 27, 2021.
The motivations for enacting the TMA can be broadly summarized as improving the quality of the Federal Register and increasing the efficiency of the trademark application examination process. For instance, there is evidence that many registered marks contain inaccurate claims of use, which clog the register and decrease its utility to the public. A USPTO audit of registered marks initiated in 2017 found that registrants of more than half of 500 randomly selected trademark registrations could not or would not verify their previously claimed use. In addition, the USPTO has seen a dramatic rise in the submission of doctored photos and other fraudulent specimens of use, particularly from foreign registrants.
Below are brief summaries of key TMA provisions related to prosecution procedures and maintenance procedures of trademarks. Other significant provisions of the TMA relate to the restoration of the presumption of irreparable harm when a trademark violation has been proven in a litigation proceeding. While outside the scope of this article, this restoration generally makes preliminary injunctions more readily available for trademark owners defending their rights. Please contact your Andrus attorney if you have any questions regarding how the provisions of the TMA may affect your trademark filing and enforcement strategies.
Expungement and Re-Examination
The TMA includes new provisions for a third party to request cancellation of some or all of the goods or services in registration. A first basis for cancellation is that the registrant never used the trademark in commerce with those goods or services (an expungement proceeding). Another basis for cancellation is that the trademark was not in use in commerce with those goods or services as of the filing date of the application or the date listed on a Statement of Use (a re-examination proceeding). Expungement proceedings can be filed by a third party between three and ten years after the registration date, although in an effort to quickly clear unused marks from the register, an expungement proceeding may be filed for any registration that is at least three years old until December 27, 2023. Re-examination proceedings must be filed within the first five years after registration.
To successfully petition for expungement or re-examination, the third party must establish that a “reasonable investigation” was conducted regarding the trademark’s use in commerce, and must also pay a proposed $600 per-class fee. Upon determining that the petitioner has established a prima facie case of non-use, the USPTO institutes proceedings requiring the registrant to respond with evidence of use for the goods or services in question. If the registrant fails to show sufficient use, the challenged goods or services will be deleted from the registration. However, if the registrant can prove sufficient use, the goods or services in the registration are maintained as-is, and estoppel provisions prevent future proceedings against the registration.
Letters of Protest
The TMA provides additional opportunities for third party challenge if the trademark has not yet been registered. Although the USPTO has long permitted third parties to submit evidence in support of a ground for refusing registration of a mark, the TMA provides express statutory authority for this process and for an associated filing fee of $50 per application. The TMA further requires that the USPTO determine whether the evidence should be included in the record of the application within two months of the submission filing. The USPTO’s decision is final and non-reviewable, although a determination to include or not include evidence in the record shall not prejudice the third party’s right to raise any issue or rely on any evidence in any other proceeding.
Shorter Office Action Response Deadlines
As compared with patent prosecution, the standard six-month response period for trademark office actions can be interminable or luxurious, depending on the circumstances of the application. The TMA provides statutory authority to bring trademark prosecution closer in line with patent procedure. Under proposed rules, applicants (excluding Madrid Section 66(a) applicants) and registrants will be required to respond to office actions within three months, with the option to request a single three-month extension for a $125 fee. Notably, unlike patent prosecution, the proposed rules indicate that the extension must be requested within the first three months of the response period in order to avoid abandonment of the application or cancellation of the registration.
The proposed rules authorized by the TMA are undergoing public comment until July 19, 2021, and are thus subject to change. After a review of the comments, the USPTO will issue a Final Rule in advance of the December 27, 2021 deadline. Due to the changes that will be required to update the associated electronic filing systems, the USPTO has proposed delaying the implementation of the shorter office action response period until June 27, 2022.
Please contact your Andrus attorney with any questions you may have regarding these changes.
Patent Engineer Clare M. Urbanski joined Andrus full-time in June 2021. Clare assists the attorneys in the preparation and prosecution of patent applications, as well as conducting prior art searches in support of opinions regarding patentability, non-infringement, and freedom to operate. Prior to her work with Andrus as a patent engineer, Clare received a Bachelor of Science in both Physics and Philosophy from Marquette University, graduating magna cum laude within the Honors College.
Congratulations to Peter T. Holsen for being recognized as an Acritas Star (part of Thomson Reuters) for excellent client service! The Acritas Stars database is a resource for senior in-house counsel that differs from other directories in that it is entirely free from law firm influence. More information about Acritas Stars can be found at www.acritas.com.
Attorneys Joseph D. Kuborn and Aaron T. Olejniczak were selected for inclusion in Managing Intellectual Property's 2021 edition of the IP Stars list as Patent Stars. In addition, Ryann H. Beck has been recognized as a Notable Professional. Managing IP’s World IP Survey covers over 80 jurisdictions, and the rankings are based on extensive research among IP practitioners carried out over six months. A team of researchers seeks responses from thousands of firms and clients. IP Stars highlights attorneys with a strong understanding of products and industry areas, as well as the requisite legal experience.
Andrus was once again included in the guide entitled IAM Patent 1000 - The World's Leading Patent Practitioners. The IAM Patent 1000 is a standalone publication that identifies individual and firm expertise in all major areas of patent law and practice. Through an extensive research process by a team of highly qualified analysts, the publication identifies the top patent practitioners and law firms in 40 of the world’s most important jurisdictions and 20 U.S. states. In addition to firm-wide recognition, Joseph D. Kuborn, Aaron T. Olejniczak, Peter T. Holsen, Christopher R. Liro and Benjamin R. Imhoff were featured individually, based on positive feedback from clients and associates.
Andrus was selected as a ranked law firm in Chambers USA 2021, identifying our firm as one of the best firms in Wisconsin in the field of intellectual property law. In addition to the firm-wide ranking, Attorney Aaron T. Olejniczak was included as a Recognised Practitioner in IP and IP Litigation. Chambers ranks lawyers and law firms based on the research of over 170 full-time editors and researchers at their head office in London. Researchers talk to lawyers and clients, conduct in-depth telephone interviews, and review submission forms provided by law firms.
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