While it is common knowledge that the 2021 budget bill passed at the end of 2020 (the Consolidated Appropriations Act, 2021, H.R. 133), it may come as some surprise that this bill also included changes to existing US trademark law. Along with the budget bill’s provisions was the Trademark Modernization Act of 2020 (the “TMA”).
Trademark Modernization Act of 2020
While the TMA was signed into law late in 2020, it does not go into effect until December 27, 2021. Among the TMA’s provisions are three new procedures for challenging trademark applications or registrations.
Formal Letters of Protest
While anyone can currently file a protest (including evidence) against a pending application with the Trademark Office, there was no formal procedure or timeline for the Trademark Examining Attorney to consider or receive such evidence. The new formal letter of protest procedure will require the Trademark Office to review the evidence submitted with a letter of protest within two months. Thus, if your competition files a trademark application and you have evidence that it should not be allowed, you have the option to file a letter of protest along with evidence for review by the Trademark Office. An experienced Trademark Attorney can advise you of the pros and cons of this procedure or assist with the filing of letters of protest.
Ex Parte Expungement
Between 3 and 10 years after a registration is approved, anyone can file a petition with the Director of the USPTO for “Ex Parte Expungement.” This allows for the removal of some (or all) of the goods or services listed by the registrant if the trademark was never used in commerce for those goods or services. Thus, if an unused Trademark is blocking your potential use or registration of a mark you can possibly remove or expunge this roadblock.
Ex Parte Reexamination
Similar to the Expungement, a reexamination challenges a trademark registrant’s alleged use of their mark. But the reexamination if only available within 5 years after a trademark is registered. Also, a reexamination proceeding can be based on evidence that the mark was not used in connection with one or more goods and/or services at the time the trademark owner declared to the USPTO it was – for example declarations of use that misstate the date of use.
It is important to note that, for each of the expungement and reexamination procedures, if the trademark owner overcomes the challenge, the challenged goods or services cannot be challenged again under that same type of proceeding by any other parties (but might be attacked through the other proceedings). Thus, it is important to consult with an experienced Trademark Attorney before proceeding.
Other than the highlighted changes above, there were also some additional changes to existing trademark law. For example, it allows the Trademark Office to shorten response deadline to less than 6 months (potentially extendable, but may require a fee), it creates a uniform rebuttable presumption of irreparable harm, which was already in place in most jurisdictions, and a few additional changes. Of course, for Houston, Texas, residents that are having trademark issues, a call to an attorney is highly recommended.