Since the Trademark Modernization Act (TMA) was enacted in December 2020 (see prior post), certain of its provisions have gone into effect, and others are on the immediate horizon. For context, see the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – and specifically p. 1020 for the text of the TMA.
Most recently, on November 17, 2021, the USPTO published its Final Rules relating to the implementation of the TMA, which primarily focus on the implementation of the new TTAB proceedings (expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation. The Rules also address letters of protest, flexible deadlines to respond to Office actions, recognition of attorneys representing trademark owners, and related fee setting (which will be covered in separate posts).
This post provides a brief update on the new expungement and reexamination proceedings.
The USPTO has continued to update its online guidance regarding the changes to Trademark Office procedure that result from the TMA. In particular, the USPTO provides a quick reference guide explaining which proceedings are useful for which purpose and the relevant timelines for filing. Initiating one of these proceedings requires electronic filing: https://www.uspto.gov/trademarks/apply/expungement-or-reexamination-forms.
Since the implementation of the new proceedings, and at the request of various stakeholder groups, the USPTO has published two tracking tools:
- Dashboard tracking all of the expungement and reexam proceedings filed to date: https://www.uspto.gov/trademarks/apply/expungement-and-reexamination-petitions-received
- Between December 21, 2021 and July 22, 2022, there have been 128 proceedings filed.
- Of them, 68 sought expungement and 60 sought reexamination.
- Dashboard tracking Director-Initiated expungement proceedings: https://www.uspto.gov/trademarks/laws/director-initiated-expungement-and-reexamination-proceedings
- As of this writing, the Director has only initiated 7 proceedings (2 for expungement and 5 for reexamination).
Next time: Flexible Response Times and Expiration of Recognition of Attorney Representation Following Registration