December 3, 2022

Volume XII, Number 337


December 02, 2022

Subscribe to Latest Legal News and Analysis

December 01, 2022

Subscribe to Latest Legal News and Analysis

USPTO Proposes Rulemaking to Implement Provisions of The Trademark Modernization Act of 2020

On 18 May 2021, the U.S. Patent and Trademark Office (USPTO) published a notice of proposed rulemaking concerning the Trademark Modernization Act of 2020 (TMA). The USPTO proposed to amend the rules to implement certain provisions of the TMA, as detailed below. The proposed new and amended rules:

  1. establish procedures and fees for ex parte expungement and reexamination proceedings

  2. provide nonuse grounds for cancellation before the Trademark Trial and Appeal Board (TTAB)

  3. establish flexible office action response periods, and

  4. amend the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and nonreviewable.

Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and rules governing attorney recognition in trademark matters. Finally, a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations. The USPTO must receive written comments regarding these proposed rules on or before 19 July 2021.

To implement the new ex parte expungement and reexamination proceedings, as required by the TMA, the USPTO proposes the following new rules:

  • Section 2.91, setting forth the requirements for a petition requesting the institution of expungement or reexamination proceedings.

  • Section 2.92, regarding the institution of expungement and reexamination proceedings.

  • Sections 2.93 through 2.94, setting forth the procedures for expungement and reexamination proceedings.

  • Section 2.143, addressing appeals to the TTAB in connection with these new proceedings.

Among other things, the USPTO proposes to set fees for petitions requesting ex parte expungement and reexamination proceedings to US$600 per class. The proposed rules also specify the petition requirements, elaborate on the reasonable investigation requirement, and identify appropriate sources of evidence and information to establish a prima facie case of nonuse for institution of expungement and reexamination proceedings. While the USPTO does not anticipate requiring real-party-in-interest information from the petitioner, the USPTO is seeking comments on whether and when the Director should require a petitioner to identify the name of the real party in interest on whose behalf the petition is filed.

To provide more flexible response periods in accordance with the TMA, the USPTO proposes a response period of three months for office actions in applications under Sections 1 and 44 of the TMA. Under the proposed rules, applicants may request a single three-month extension of this three-month deadline, subject to a fee of US$125 (for an extension filed through the Trademark Electronic Application System). Applications filed under Section 66(a) will not be subject to the three-month deadline for office action responses; instead, the deadline will remain at six months. The USPTO also asks for comments on two alternatives to this approach consisting of:

  1. a two-phased approached, with each phase having a separate shortened but extendable response period; or

  2. an initial two-month response period, with extensions available in the third, fourth, fifth, and six months where the extension fee increases with time.

To further implement the newly-codified letters of protest under the TMA, the proposed rule amends the existing letter-of-protest rule to indicate that letter-of-protest decisions are final and nonreviewable.

Amendments are also proposed for the rules concerning the suspension of USPTO proceedings and rules governing attorney recognition and correspondence in trademark matters. The rule proposes that recognition of a power of attorney will continue until the applicant or registrant revokes the power of attorney or the attorney withdraws from representation.

Finally, the USPTO proposes a new rule formalizing its longstanding procedures concerning action on court orders cancelling or affecting a registration, currently set forth in Section 1610 of the Trademark Manual of Examining Procedure, which requires submission of a certified copy of a court order.

The USPTO’s proposed rules to implement the TMA can be found here, and written comments on the proposed rules can be submitted to the USPTO here.

In addition to the written comments deadline, the USPTO will hold two roundtables to field questions and hear public opinion on the proposed rulemaking. The first roundtable will take place 1 June 2021 from 1:00 – 3:00 p.m. EST. The roundtable is open to the public but registration is required. A recording of the roundtable will be posted on the USPTO website within two weeks of its conclusion. A second roundtable is scheduled for 14 June 2021.

Copyright 2022 K & L GatesNational Law Review, Volume XI, Number 145

About this Author

R. Gregory Parker IP Lawyer KL Gates Law Firm

Greg Parker is a partner in the firm’s Nashville office and is a member of the Intellectual Property practice group. Greg focuses his practice on IP Litigation and IP Procurement and Portfolio Management. Greg has considerable experience representing technology companies in patent, trademark, trade secrets, and copyright disputes in federal courts across the United States. Greg is experienced in all phases of patent, trademark and copyright infringement litigation and trade secret misappropriation litigation, including developing overall strategies for both intellectual property holders...

Christopher M. Verdini Intellectual Property Litigation Attorney K&L Gates Pittsburgh, PA

Mr. Verdini is a trial attorney who focuses on intellectual property litigation and intellectual property counseling. He played a lead role in the pretrial and trial efforts that led to obtaining a $1.17 billion verdict for a client in a patent infringement case; the largest verdict in the U.S. in 2012 as reported by the National Law Journal and the third largest ever in a patent case. Mr. Verdini also obtained one of the largest verdicts in Pennsylvania in 2013 for a client in a patent infringement case. Mr. Verdini litigates trademark infringement, copyright infringement,...

Brittany L. Kaplan Associate Chicago IP Procurement and Portfolio Management

Brittany Kaplan concentrates her practice in intellectual property law, with a focus on trademark clearance, prosecution, protection, enforcement and supporting portfolio management for clients ranging from multi-national to start-up companies across industries. Ms. Kaplan also assists in advising clients on the selection and registration of trademarks in the United States and abroad, proper trademark usage, and trademark protection for packaging. In addition, Ms. Kaplan assists clients with copyright infringement and copyright proceedings, trade dress infringement, domain name disputes,...