Before a mark can become registered in the United States, a trademark applicant must usually provide evidence that its mark is in use. Furthermore, to maintain the trademark registration the registrant must periodically show it is still using the mark in commerce. Unfortunately, the federal trademark registers are cluttered with marks that are not actually in use, and which potentially block legitimate trademarks from becoming registered. To address these issues, Congress enacted The Trademark Modernization Act of 2020 (TMA) as part of the coronavirus relief bill. See our discussion here. The TMA is to take effect on December 27, 2021, and the U.S. Patent and Trademark Office (USPTO) published its proposed rules to implement provisions of the TMA on May 18, 2021. The USPTO is accepting comments about the proposed rules until July 19, 2021.
Some of the proposed new procedures to streamline the removal of unused trademarks from the register are discussed here. The TMA also provides for flexible office action response periods during the prosecution of a trademark application, which the USPTO expects to go into effect on June 27, 2022. Currently, if an office action issues during the examination of a trademark application, an applicant must file a response within six months. The TMA, however, allows the Examiner to set a response period between 60 days and 6 months, with extensions available. For example, an Examiner may set a shortened period to respond to formalities such as amendments to identifications of goods and services or mark descriptions. To respond, however, to a more complex issue such as a likelihood of confusion refusal, an Examiner may set a longer response period to allow an applicant to investigate and gather evidence.
To implement the TMA requirement of a more flexible response period, the USPTO proposes an initial office action response period of three months in applications under Sections 1 and 44 of the Trademark Act. Applicants may also request a single three-month extension of this three-month deadline, with the payment of an extension fee of $125. The USPTO proposes to have the same three-month response period and single three-month extension apply to office actions issued in connection with post-registration review of registration maintenance and renewal filings. The deadline to respond to office actions issued in applications filed via the Madrid Protocol will remain at six months.
The USPTO is also seeking comments on two alternatives to the above approach. The first alternative is a two-phased approach consisting of an initial phase to address formalities, and a second phase to address substantive issues, with each phase having a separate shortened but extendable response period. The second alternative is to provide an initial two-month response period, with extensions available in the third, fourth, fifth, and sixth month where the extension fee increases with time. In comparison, U.S. patent applicants have a one-to-three-month response period to respond to an office action, with monthly extensions available with the payment of a fee, up to the statutory six-month period. Thus, these proposals will bring trademark prosecution in line with patent prosecution in the U.S.
The TMA’s flexible response period has the potential to speed up the trademark application process by allowing trademark examiners to set shorter deadlines for applicants to respond to office actions. This may result in the quicker abandonment of improper applications that may be blocking legitimate trademark applications. When the USPTO issues final rules to implement the TMA, Faegre Drinker’s TCAM group will continue to keep its clients informed.
