On May 8, 2023, USPTO Director Kathi Vidal submitted to the Trademark Public Advisory Committee (“TPAC”) the USPTO’s proposed revisions to its trademark prosecution and TTAB fee tables. The USPTO’s Fee Setting and Adjustment page has been updated to include Director Vidal’s Letter (“Letter”), the full Table of Proposed Fee Adjustments (“Fee Table”), Executive Summary, Background Information and a table comparing Current, Proposed and Unit Costs embedded in trademark fees (“Unit Costs”). The proposed increases in these trademark fees resulted from the USPTO’s “comprehensive trademark fee review” and were deemed necessary “to increase aggregate revenue and refine certain fees to efficiently finance ongoing operations.” See Letter at 1. Continue reading
On November 23, 2022, the U.S. Patent and Trademark Office (“USPTO”) and the Copyright Office issued a joint request for public comment regarding the interplay between non-fungible tokens (NFTs) and intellectual property law and policy issues.
This request for comment comes in response to a June 9, 2022 letter sent by Senators Patrick Leahy (D-VT) and Thom Tillis (R-NC) on behalf of the Senate Committee on the Judiciary, Subcommittee on Intellectual Property to the USPTO and the Copyright Office, which letter requested that the agencies undertake a study of IP law and policy issues relating to NFTs, and more broadly consider “how best to secure [IP] rights for emerging technologies”. The letter requested a reply by July 9 – and completion of this study by no later than June 9, 2023.
In particular, the Senators requested that the joint study “address the following list of non-exclusive factors”, and invited the agencies to add additional topics for review: Continue reading
Revised November 14, 2022 to take into account a new Federal Register Notice published by the USPTO on October 13, 2022. Originally published Aug. 12, 2022
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 3, 2022. (NB: October 13, 2022 Federal Register Notice changed the effective date from December 1 to December 3). 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.
UPDATED: 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 but only after October 7, 2023.
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. (NB: October 13, 2022 Federal Register Notice delayed the implementation of this Rule until December 3). Continue reading
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
On December 27, 2020, President Trump signed into law the Consolidated Appropriations Act of 2021 (H.R. 133 – as enrolled) which included the full text of the Trademark Modernization Act of 2020 (“TMA”) as modified from the versions originally introduced on March 11, 2020 as H.R. 6196 and S. 3449. See H.R. 133 at 1019-1029; see also H. Rept. 116-645* at 37-57 (Dec. 14, 2020) (report by House Committee on the Judiciary in support of H.R. 6196).
Purpose of the TMA
At its core, the TMA provides some new tools aimed at “decluttering” the trademark Register of those registrations for which a registered mark was either (1) never used in connection with the recited goods or services, or (2) not used as of an operative date (either the filing date of the application if it was submitted based on existing use in commerce, or the date identified on a Statement of Use/Amendment to Allege Use for an intent-to-use application) – thus suggesting that these registrations should never have been issued. The House Judiciary Committee explained that these new proceedings are intended to “clear registrations from the trademark register for which proper use in commerce was not made.” H. Rept. 116-645* at 37 (Dec. 14, 2020).
Legislative history suggests that this Act was aimed at addressing the “recent rise in fraudulent trademark applications,” particularly those from China, that impede legitimate efforts to launch new marks into the marketplace. Id. at 39. As of September 2018, applications emanating from China had increased by more than 1100% over the prior 6-year period, and investigations revealed that a significant number of these applications “have fraudulent claims of use and/or fake specimens” supporting the registration. Id. Rep. Johnson (one of the co-sponsors of the House Bill) lamented the difficulty small businesses face in obtaining registrations for “strong, commercially viable marks”, especially when “[t]his market-entry problem has been exacerbated by the recent flood of fraudulent trademark registrations from China, many of which rely on doctored photos to demonstrate use of a mark to fraudulently obtain a trademark registration.” One-Page Summary ¶ 3-4. Ideally, these new proceedings will help create a cost-effective mechanism to clear the Register of this narrow set of blocking registrations for which no valid use could be demonstrated.
Provisions of the TMA
Some highlights from the Act (H.R. 133 at 1019-1029):
- Permits flexible response deadlines for certain Office actions issued by examining attorneys during prosecution of trademark applications – such that some responses would be due between 60 days and 6 months, instead of the standard 6 month deadlines. TMA, Sec. 224. More details about these flexible response deadlines and associated fees to request extensions up to the full 6-month period must be established by regulation within the next year.
- Creates two new ex parte proceedings to allow for further examination or cancellation of registrations when the registered marks either have never been used in commerce (expungement), or were not used as of a relevant time period (reexamination). TMA, Sec. 225(a) and (c) (creating processes under Section 16A and 16B).
- Creates an additional ground for cancellation in a proceeding before the Trademark Trial and Appeal Board where a mark covered by a registration was never used in connection with some or all of the goods or services covered by the registration. TMA, Sec. 225(b).
- Codifies the rebuttable presumption of irreparable harm, resolving a Circuit split involving the standard for proving entitlement to an injunction for violations of the Lanham Act. TMA, Sec. 226.
- Commissions a study of the effectiveness of this Act – focusing on the time period between 12 months and 30 months after enactment and addressing several targeted areas relating to attempts to reduce inaccurate and false claims of use in commerce of marks registered with the USPTO. TMA, Sec. 227.
- Confirms the USPTO Director’s authority to “reconsider, modify or set aside” a decision of the Trademark Trial and Appeal Board in interference, opposition, concurrent use or cancellation proceedings in connection with the Principal Register, in connection with ex parte appeals of an examiner’s refusal to register the mark of an application, or the cancellation of registrations on the Supplemental Register. TMA, Sec. 228.
More On Expungements and Reexaminations
Ex Parte Expungement Proceedings
Expungement applies when a registered mark has never been used in commerce in the U.S. in connection with the goods or services covered by the registration. TMA, Sec. 225, Sect. 16A(a). There are some important exceptions for those relatively new registrations that were filed under Section 44(e) (based on a foreign registration) or under Section 66 (requesting an extension of protection from a foreign application filed under the Madrid Protocol) within the statutory period for proving use in the U.S. Id., Sect. 16A(f) (describing showings of excusable non-use).
A petitioner can only seek expungement between the third and tenth years after registration – which takes into account not only the initial three-year period following registration during which Section 44(e) or Section 66 registrations are not subject to cancellation for non-use, but also caps exposure for these ex parte claims to a maximum of ten years following registration. Id., Sect. 16A(i). In essence, expungement proceedings are intended to target those relatively new registrations for which use never occurred, and, theoretically, the registration should never have issued.
(Note that inter partes cancellation proceedings are not estopped by these proceedings; a new grounds for an inter partes proceeding seeking cancellation of registrations for which the registered marks were never used in connection with the recited goods or services was also created by this Act. Id., Sect. 16A(b).)
Ex Parte Reexamination
Reexamination applies when a mark was not in use in U.S. commerce in connection with some or all of the goods or services recited in the challenged registration as of a relevant date. For use-based applications, the “relevant date” is the date of filing of the initial application. For intent-to-use applications, the “relevant date” is the date on which a Statement of Use or Amendment to Allege Use is filed, or when all approved extension to file these have expired. TMA Sec. 225, Sect. 16B(b).
A petitioner can only seek reexamination within the first five years after a registration issues. Id. Sect. 16B(i). This provision aligns with the current time periods under 15 U.S.C. § 1064 for cancellation of a registration on all available grounds, given that some grounds for cancellation are not available after this initial five-year anniversary.
Features Common to These New Ex Parte Proceedings
In both cases, there are certain protections built into the process against misuse of the proceedings by bad actors, such as competitors seeking to tie up a legitimate user by maliciously invoking these proceedings. First, while any third-party can file a petition seeking expungement or reexamination, every petitioner must submit documentary evidence supporting the claim – and the Director has discretion not to institute a proceeding if the Director finds that the evidence is insufficient. The statute requires the Director to promulgate regulations within the next year defining the specific procedures, types of and volume of evidence required to support a prima facie case justifying the institution of proceedings and the requisite filing fees. TMA, Sec. 223 & Sec. 225, 16A(c) & 16B(c).
Registrants have an opportunity to submit counter evidence to prove that their marks are in use in connection with the applicable goods and/or services. Once registrants meet their burden to prove such use, no further ex parte proceedings under this section will be permitted against the same goods and services of this registration and estoppel will apply – regardless of who the petitioner is. TMA Sec. 225, 16A(j) & 16B(j).
The Director also has the discretion (1) to decline to institute proceedings, notwithstanding any evidence submitted by a petitioner, (2) to institute proceedings on the Director’s own initiative based on evidence that he or she discovers independently, and (3) to reconsider, modify or overrule a decision of the TTAB in these cases. This discretion may act as an appropriate check and balance against a potential misuse of these proceedings.
Availability of These Proceedings
Before either of these new proceedings will be available, the USPTO will have to engage in rulemaking within the next year to establish specific evidentiary requirements, procedures to challenge applicable registrations and respond to petitions filed, and the requisite filing fees. As a result, these proceedings are not scheduled to be available to interested parties until December 2021.
Potential Impact of TMA on Trademark Registrants with Legitimate Use in the U.S.
Unfortunately, while the legislative history makes clear that the sponsors intended this Act to target a narrow type of fraudulent activity by foreign actors, as written this Act has a potentially broader impact. Even registrants who can demonstrate legitimate use in the U.S. may also find themselves defending proceedings under this Act.
Accordingly, registrants should be proactive and prepare to defend such challenges by, among other steps:
- Keeping records documenting use in the U.S. of their registered marks in connection with the goods and services recited in the registration, to be produced on demand quickly and without significant operational expenses at the time the challenge is made;
- Carefully identifying the correct “dates of first use” on their applications to avoid exposing the resulting registrations to potential reexamination (and cancellation) if their dates prove to have been (fatally) inaccurate;
- Regularly reviewing their portfolios and confirming that their marks remain in use in the U.S. in connection with all of the goods or services claimed in their registrations – particularly when they are required to submit Declarations of Continued Use during the maintenance periods; and
- Any time there is no use of the registered mark in connection with specific goods or services recited in the registration, making written records of the registrant’s intent to resume use and documenting steps taken to resume use.
In light of COVID-related business interruptions, many trademark owners may have seen related supply chain interruptions that impact whether or not they can distribute goods bearing their relevant marks in the marketplace in order to preserve their trademark rights. In some instances, these kinds of interruptions might qualify for “excusable non-use” that might avoid a cancellation, but a careful evaluation of the registrant’s portfolio or pending maintenance deadlines might be in order to determine whether these exceptions might apply in a particular case.
The purpose of all of these new provisions is to strengthen the Register of marks in the USPTO’s system. It is possible that these new proceedings could be a welcome tool for trademark owners seeking cost-effective ways to clear away marks that managed to reach registration despite the registrant’s failure to properly use the marks in U.S. commerce. In particular, these new ex parte proceedings could help clear some deadwood from the Register, since many registrants would not attempt to defend registration for marks not in use.
The U.S. registration system does not permit registrants to merely reserve rights in marks to be used at a later time in order to prevent others from using them in connection with their own goods or services – but once an application matures to registration, it becomes more difficult (and expensive) to challenge these registrations on an inter partes basis, even if there were proof of fraud. Once the effective date for these new proceedings occurs, and following the implementation of sufficient regulations regarding the process and evidentiary requirements, these tools could prove valuable to U.S. trademark holders as cost-effective ways to clear the way for registration of their own marks.
Other USPTO Programs Designed to Combat Fraudulent Filings
- Mandating that foreign filers must engage U.S. counsel in order to prosecute an application and requiring mandatory electronic filing for all applications and TTAB proceedings – see “USPTO Published New Exam Guide on Mandatory Electronic Filing,” Privacy and IP Law Blog (Feb. 7, 2020) (includes links to the exam guides and proposed/final Mandatory US Counsel and Mandatory Electronic Filing rules).
- Procedures to examine questionable or fraudulent specimens – see “USPTO’s Recently Announced Pilot Program on Fraudulent Specimens,” Privacy and IP Law Blog (June 12, 2018).
- Developing and testing automated systems to check the validity of specimens submitted in connection with applications, called the “Automated Specimen Analysis Project” – see discussion in TPAC’s Annual Report 2020 at 14 (Nov. 3, 2020).
- Heightened verification of declarations and specimens submitted with post-registration renewal applications through a post-registration audit program – see “USPTO Expands Random Audit Program,” Privacy and IP Law Blog (Aug. 11, 2019).
Additional Resources regarding the TMA
- Written Statement of S. Lee (Chief IP Council, Target Corporation) presented during Hearing before the Senate Judiciary Committee’s Subcommittee on Intellectual Property on Fraudulent Trademarks: How They Undermine the Trademark System and Harm American Consumers and Businesses (Dec. 3, 2019).
- Sen. Tillis (R-NC) Press Release, “Bipartisan, Bicameral Legislation Introduced by Sen. Tillis and Rep. Johnson Modernizing U.S. Trademark System to Become Law” (Dec. 21, 2020).
Rep. Hank Johnson (D-GA) Press Release, “Legislation That Combats Fraudulent Trademark Filings, Protects Consumers Passes in Omnibus” (Dec. 22, 2020).
- Trademark Public Advisory Committee Annual Report 2020 at 26-28 (Nov. 3, 2020) (discussing efforts to declutter Trademark Register).
* As this article went to publication, the link to House Rept. 116-645 as stored on Congress.gov did not work. However, this link was provided in the listing of actions take in connection with H.R. 6196, a prior version of this bill. It is hoped that the broken link to the official copy will be fixed soon.