In December 2020, Congress passed the Trademark Modernization Act (TMA), which was created to remove registrations not in use. In May 2021, the U.S. Patent and Trademark Office (USPTO) proposed changes to the trademark rules of practice to implement the TMA. The proposed changes include two new ex parte proceedings (expungement proceedings and reexamination proceedings) before the Trademark Trial and Appeal Board (TTAB) for expedited cancellation of unused registered trademarks. Each proceeding requires the petitioner to pay a fee of $600 per challenged class. The proposal also includes changes to existing procedures, including new ground for TTAB cancellation, a shorter response period for office actions, and court orders concerning registrants. IP Law Daily interviewed Finnegan partner Brett Heavner for his thoughts on the proposed changes.
Brett said he was satisfied with the proposal, describing it as reasonable and noncomplicated. He believes the new expungement and reexamination procedures will be effective tools for targeting overbroad registrations obtained through the Madrid Protocol and the Paris Convention. He noted the $600 fee per class of challenged goods or services is substantial enough to discourage non-serious petitioners but small enough to encourage challenges by parties who otherwise may hesitate to file a costly cancellation proceeding. He also believes the proposed expanded letters of protest are another tool that could be very useful for brand owners.
