November 18, 2021
IP Watchdog
On October 17, 2021, the U.S. Patent and Trademark Office (USPTO) published a final rule implementing the 2020 Trademark Modernization Act (TMA). The rule addresses fraudulent filings by changing procedure for challenging pending applications and registered marks. The rule also establishes “flexible response periods” for responding to Office actions, in which the deadline will be changed from six months to three months, with a one-time optional three-month extension for an additional fee. IP Watchdog contacted Finnegan attorney Katie McKnight for her insight on the rule.
Katie explained that the rule change serves as a reminder for registrants to get their affairs in order, stating “Registrants should strongly consider reviewing their portfolios to ensure their registrations are accurate, both in terms of registration information and use.”
She added that with the new rule, registrants must ensure accurate correspondence information to prevent cancellation if they miss the three-month response period. Despite the shortened response period, the rule also implements set fees for expungement and reexamination proceedings, providing an alternative route for trademark practitioners. Katie explained:
“With a filing fee of only $400 per class, a petition for expungement or reexamination may be more cost efficient than a petition to cancel at $600 per class (filed via TEAS). Moreover, because a petition need not identify the real party in interest, the new expungement and reexamination proceedings could allow brand owners a way to fly under the radar, if they are afraid of “poking the bear.” However, registrants should be aware that under Trademark Rule 2.91(h), the Director retains the discretion to require the identity of the real party in interest in order to discourage abusive filings.”
Trademark Modernization Act, fraudulent trademark application, United States Patent and Trademark Office (USPTO), trademark registration
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