The final rules for the Trademark Modernization Act (“TMA”) go into effect this week on December 18, 2021. There are several key additions and changes to the law that all IP owners should take into consideration.

New nonuse proceedings

The TMA adds two new procedures that can be used to petition the USPTO to remove registered trademarks that have not actually been used in U.S. commerce. These new procedures are: Ex Parte Expungement Proceedings and Ex Parte Reexamination Proceedings. There are no limits on the number of petitions that may be filed, and there is no requirement to disclose the real party in interest for the petitions. Fees for filing a petition for Ex Parte Expungement or Reexamination are $400 per class.

Flexible (shortened) response periods

The TMA implements shortened response periods for Office Actions. Specifically, applications filed under Section 1, Section 44, and post-registration will be given a shortened three (3) month response period (shortened from six (6) months).  For a $125 fee, applicants may request a single three (3) month extension of time. The extension request must be filed with the USPTO on or before the deadline for response to avoid abandonment of the application. Response deadlines for international applications filed under Section 66(a) remain 6 months.

For additional changes and more detailed insight regarding the final rules, please see our previous client alerts for the TMA here:

• https://www.tuckerellis.com/alerts/trademark-modernization-act-of-2020-benefits-to-trademark-owners/
• https://www.tuckerellis.com/alerts/uspto-publishes-final-tma-rules/