The USPTO Proposes New Rules to Implement the Trademark Modernization Act of 2020

USPTO Implement the Trademark Modernization Act

On May 18, 2021, the United States Patent and Trademark Office (USPTO) published a notice of proposed rulemaking, inviting public comment on its proposals for changes to the trademark rules of practice. The proposed rules, which are designed to implement the Trademark Modernization Act of 2020, will give businesses and brand owners new tools to clear away unused registered trademarks from the federal register and will give the USPTO the ability to move applications through the system more efficiently by:

  1. Establishing two new ex parte proceedings for expungement and reexamination of registered marks that will enable interested parties to cancel some or all of the goods or services in a registration;
  2. Providing a new ground for cancellation proceedings before the Trademark Trial and Appeal Board (TTAB) based on an argument that the registered trademark has never been used in commerce;
  3. Allowing trademark examiners to shorten the time to respond to office actions; and
  4. Making the USPTO’s decisions on third-party letters of protest final and non-reviewable.

Brand owners and trademark practitioners have a lot to look forward to in these proposed rules, particularly the new ex parte proceedings that will likely enable registration of many new trademarks as the goods and services covered by some already-registered marks are canceled for nonuse.

Stay tuned to our Trademark Marketing & Copyright Blog over the next few weeks as we dissect and analyze the USPTO’s proposed rules and how the rules might affect your brand-protection strategies.  

You can also watch the first of the USPTO’s two virtual roundtables discussing the proposed rules today from 1:00-3:00 pm EST. The roundtable is open to all and free to attend, but you must register in advance. Then, head on over to Regulations.gov and leave a comment about the proposed rules for the USPTO.

About the Author

Arthur J. DeBaugh

Art DeBaugh focuses his practice on trademarks, marketing/advertising/promotions issues, copyrights, and business and corporate matters. 
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