On November 17, 2021, the USPTO published its Final Rule relating to the implementation of the Trademark Modernization Act (TMA) (part of the Consolidated Appropriations Act of 2021, Pub. L. No. 116-260 (Dec. 27, 2020) – 2,126 pages long (!) – see p. 1020 for the text of the TMA). Nov. 17, 2021 Final Rule, “Changes To Implement Provisions of the Trademark Modernization Act of 2020,” 86 FR 64300, pp. 64300-64334 (also available in PDF form).
Prior posts on this blog previously described the two new TTAB proceedings created by the TMA (i.e., expungement and ex parte reexamination based on allegations of non-use) as well as the new non-use grounds for cancellation. This post addresses the changes in the standard deadlines to respond to an Office action issued by the Trademark Office (either during the application process or in connection with post-registration filings) (aka “flexible response periods”) and withdraws the USPTO’s stated intention to change the “attorney recognition rules” under 37 C.F.R. § 2.17(g). Some key points are summarized below regarding these two provisions, but we recommend reading the full Final Rule (35 pages) and the USPTO’s updated Trademark Modernization Act Page in order to get a more complete picture of these two aspects of the amendments.
Flexible Response Periods
The TMA amended 15 U.S.C. § 1062(d) to permit the USPTO to reduce the periods of time to respond to Office actions to between 60 days and 6 months, although the final response periods had to be set by regulation, rather than the whim/discretion of any individual Examining Attorney on a case-by-case basis. Prior USPTO requests for public comment on proposed rulemakings offered several options for these response periods.
In its Final Rule, the USPTO outlined the final selection: Instead of the traditional six (6) months we’ve always had to respond to any Office action issued by the USPTO, applicants for certain types of applications shall have an initial three (3) month period to respond, but a single-three (3) month extension is available upon request and payment of additional government fees ($125 for TEAS applications or $225 for paper filings). See pages 7 and 17 of the Final Rule discussing the flexible response periods (and public comments received) in more detail, and page 26 discussing amendments to 37 C.F.R. § 2.6 for new fees to be imposed as of December 1, 2022. Failure to file a response to the Office action or to request the extension and pay the fee before the initial three-month period expires will result in abandonment of the application.
This same three-month period (followed by a single-three-month extension upon timely request and payment of the fee) will also apply to post-registration Office actions.
In contrast, however, applications filed under Section 66 (Madrid Protocol) are not subject to the shorter response period (plus extension and additional fee) apparently because of U.S. treaty obligations; those applicants can still rely on the original six-month response period.
37 C.F.R. § 2.93 (relating to responding to Office actions issued in connection with the new reexamination proceedings) has already been updated to reflect the deadline to respond and the new fee requirements for extensions. We would anticipate that the regulations implementing the flexible response periods generally will track the language of 37 C.F.R. § 2.93(b)(1).
Given the differences in response deadlines for Office actions issued in different kinds of cases, it will be very important to confirm (quickly, after an Office action is received) which response period applies so that complete responses or requests for extension (and payment of the required fee) can be accomplished timely.
As the Deputy Commissioner for Trademark Operations, Dan Vavonese confirmed during the Trademark Public Advisory Committee (TPAC) Meeting on July 29, 2022, this amendment will go into effect on December 1, 2022.
Recognition of Attorney Representation of Trademark Owner
In prior versions of (and proposed amendments to) this Rule, the USPTO stated its intention to change its practice regarding recognition of attorneys representing clients before the Trademark Office under 37 C.F.R. § 2.17(g) to be more in line with standard practice (outside of the USPTO) that attorneys continue to have obligations on behalf of their clients under the relevant Rules of Professional Conduct long after the registration issues or the application has been abandoned.
In the July 2, 2019 Final U.S. Counsel Rule, “Requirement of U.S. Licensed Attorney for Foreign Trademark Applicants and Registrants” (“U.S. Counsel Rule”), 84 FR 31498, 31498-31511 at 31501 (also available in PDF form) the following explanation appears:
- “Prior to implementation of this rule, § 2.17(g) referred to the duration of a power of attorney. However, under § 2.17(b), a representative may be recognized by methods other than the filing of a power of attorney. Therefore, in order to respond to the commenter’s inquiry and to clarify when recognition ends, regardless of the how the representative was recognized, the USPTO felt it was necessary to amend § 2.17(g) to make clear that it refers to the duration of recognition, not just to the duration of a power of attorney.”
More recently, in the May 18, 2021 Notice of Proposed Rulemaking, “Changes to Implement Provisions of the Trademark Modernization Act of 2020,” 86 FR 26862, 26862-26888 at 26870 (also available in PDF form) the following revision was proposed:
- “The USPTO proposes revising § 2.17(g) to indicate that, for the purposes of an application or registration, recognition of a qualified attorney as the applicant’s or registrant’s representative will continue until the owner revokes the appointment or the attorney withdraws from representation.”
This May 2021 proposal contemplated that attorneys would continue to be recognized as counsel of record on behalf of these clients (for maintenance and renewal purposes, audit responses, notifications of TTAB proceedings or litigation), even if ownership of the registration changed, until that attorney withdrew its representation, or the applicant/registrant filed a revocation of the power of attorney/appointment of new attorney. See 86 FR 26862 at 26870.
In the November 17, 2021 Final Rule, however, the USPTO withdrew that revision – and instead decided not to implement these proposed amendments to 37 CFR §2.17(g) “at this time.” (Or maybe not at all.) The Final Rule revised 37 CFR § 2.18(a)(1) to refer to “recognition” instead of “representation” to be more consistent with “the fact that the USPTO does not control representation agreements between practitioners and clients but merely recognizes an attorney for purposes of representation before the USPTO.” (Rule at 64307).
Note in particular that the USPTO will be corresponding directly with registrants regarding service of cancellation petitions or the institution of expungement or reexamination proceedings, and now send electronic certificates of registration to registrants’ email addresses upon issuance. Thus, trademark owners may receive certain communications directly from the USPTO even when they are represented by counsel in connection with other trademark matters. As a nod to practitioners’ comments to the prior iterations of this Rule, the USPTO has announced that it “plans to send notices of institution of expungement and reexamination proceedings to the owner currently identified in the registration record and to the attorney of record, if any, or any previous attorney of record whose contact information is still in the record.” Id. Both trademark owners and attorneys should review any communications received carefully to be sure that all necessary recipients have been notified and can respond timely to avoid any loss of rights.
- Trademark Modernization Act Signed into Law (Jan. 5, 2021)
- More on the USPTO’s New Expungement and Reexamination Proceedings (August 1, 2022)