The Trademark Modernization Act: New Procedures and Deadlines
The Trademark Modernization Act of 2020 (TMA), passed on December 27, 2020, has made significant changes to the federal trademark law. The act was enacted as one of the parts of the coronavirus relief bill. According to the TMA, there have been the creation of several new tools that trademark owners can easily use to challenge any inaccurate or false claims of their trademark rights.
The Trademark Modernization Act of 2021 came into effect on December 18, 2021. The act aims to reduce the number of federally registered trademark registrations that are not in use and are superfluous in the United States. The trademark office USPTO (United States Patent and Trademark Office) can further move the applications through the registration process more effectively.
If you want to get more insights on the Trademark Modernization Act, you can discuss it with a Los Angeles Trademark Lawyer.
What is the need for the US Trademark Modernization Act?
The influx of applications put a strain on the USPTO, thus slowing down the application process for those who wanted to protect their assets. It was nearly impossible for the USPTO to process all of these applications in a timely manner. The TMA should help reduce the backlogs significantly by providing new tools to ensure that trademark owners can quickly and effectively challenge false claims.
Previously, the Lanham Act was the federal law that protected trademarks, but it did not provide any procedures or deadlines to challenge false trademark registrations. The TMA provides new procedures and deadlines so that trademark owners can take advantage of the Lanham Act.
The Lanham Act prohibits any false or misleading claims of trademark ownership in the United States. Under the TMA, business owners can now challenge inaccurate or false trademark registrations with a new procedure. This should help business owners prevent their trademarks from being misused by third parties and protect their business from business dissolution.
The Trademark Modernization Act is a major step forward in protecting business owners in the United States. Business owners should consult with a trademark lawyer to ensure that their business is compliant and protected.
Understanding the Primary Modifications to Trademark Act
One of the major changes that came with the trademark act was that applicants need to register using the identification portal. This will enforce more strict identification methods. This change will help to focus on quality and reduce the number of applications that are unnecessarily submitted. It will also prevent any spamming of the USPTO system.
The office action response time was also minimized to a 3-month turnaround instead of the 6-month turnaround that was in place before the TMA. This will allow for a quicker registration and help to speed up the process by reducing the backlogs, letting trademark owners use their trademarks sooner.
Moreover, the trademark modernization act provides trademark owners with a reexamination procedure which will enable trademark owners to challenge inaccurate or false trademark registrations. This reexamination procedure is a great tool that trademark owners can use to protect their trademark rights.
Additionally, the trademark modernization act created a new process for trademark expungements, allowing trademark owners to get rid of trademark registrations that are no longer in use on the trademark register. This new process is called trademark expungement and it allows trademark owners to file a petition with the USPTO to remove trademark registrations that are not in use for any goods or services.
This trademark modernization act expungements will help to reduce the amount of trademark registrations that are unnecessary and superfluous in the United States trademark register. This is a great tool for trademark owners to get rid of trademark registrations that are no longer needed or used and free up trademark space for trademark owners who actually need trademark protection.
What is the fee for Expungement and Reexamination proceedings
The expungement or reexamination proceedings petition must be given always in writing. It needs to be filed with the USPTO Trademark Electronic Application System. The filing petition fee is nearly $400 per international class.
Can U.S. Trademark Registration Be Cancelled for Non-Use?
According to Section 63 of the US trademark act; any party can request the Board of Trademark to cancel the trademark registration. They need to show proof that the trademark owner has no intention of using it for goods and services.
What must be included in the petition of Expungement and Reexamination Proceedings?
Such a petition would have to include why the petitioner has faith that the registered mark will not be in use in connection with specific goods and services of any business. Moreover, there must be evidence supporting a prima facie case of non-use.
Can a registrant file an appeal?
The short answer is yes. The decision on expungements and reexamination proceedings can be challenged by filing an appeal to Trademark Trial and Appeal Board (TTAB) and through a request for reconsideration. Our attorneys stand ready to guide you with the new norms and guidelines that will minimize the issues that can surface. Call us to schedule a free case consultation today.
