New Trademark Office Rules for Applications and Registrations

As of December 18, 2021, the first parts of the Trademark Modernization Act (TMA) went into effect. The bill was passed at the end of 2020, and the U.S. Patent & Trademark Office (PTO) has been working on modifications to the current rules to implement the required changes. 

Some of the rule changes will not be effective until later in 2022. However, as of January 2022, petitioners have been able to bring expungement proceedings.

What are some of these changes?

1. Marks not in use may be expunged (canceled)

Trademark rights are fundamentally based on the use of a mark in commerce. The Federal Register should accurately reflect valid registered marks. An increase in fraudulent applications led to a rise in registrations for marks that are no longer in use, or were never in use. 

In an effort to clear the register of this ‘dead wood,’ the proceeding allows a petitioner to seek expungement of a registration that is at least 3 years old. The petitioner must pay a fee and submit evidence of nonuse. The registrant is then given a deadline by which to submit evidence showing the mark is still in use or the registration will be canceled.

2. Audits are here to stay

The TMA formalizes the PTO audit process that had begun in recent years as part of an effort to enforce trademark use requirements. As part of reinforcing the accuracy of the Federal Register, the examining attorneys may contact a registrant asking for verification that the mark is in use in commerce for all the goods and services listed in the registration.

If the mark is no longer in use for specific items in the description, the owner has the opportunity to remove them from the record. Failure to prove use can result in penalty fees and even cancellation of the registration.

3. Shorter deadlines and fees for extensions

Later in the year, applicants will see different deadlines for responses to correspondence issued by the PTO. For example, an applicant generally has up to 6 months to respond to Official Actions. However, new rules will shorten response times for some issues to 60 days. In some cases, the applicant will have the option to pay a fee to gain additional response time.

What Should Trademark Owners Do?

• Maintain records regarding continued use of your marks. You may need to submit evidence sufficient to show that the mark has been in continuous use for all the goods and services included in your registrations.

• Pay attention to correspondence from the PTO and respond to all inquiries in a timely manner. Otherwise, federal rights may be lost.

• Safeguard your registration. We can register your mark with a watch service, so you can be notified of any risk to your rights. 

Email us at Trademarks@ChubbIPLaw.com to find out how.