By: Mark Kallevig*
Introduction
The Trademark Modernization Act of 2020 (TMA) was passed on December 27, 2020, as a part of the Consolidated Appropriations Act of 2021. On May 18, 2021, the United States Patent and Trademark Office (USPTO) issued a set of proposed rule changes to implement the TMA. After considering the comments received during the comment period, the USPTO issued the final rule changes implementing the TMA on November 17, 2021.
The TMA contained a number of significant changes to the body of Trademark Law including new procedures for ex parte reexamination and expungement, the addition of trademark nonuse as grounds for cancellation at the Trademark Trial and Appeal Board (TTAB), codification of the letter-of-protest procedure, and a shortened response period to Office Actions. In particular, the ex parte reexamination and expungement proceedings are intended to provide a “more efficient” way to remove marks “from the trademark register” which have not been properly used in commerce.
This paper examines the ex parte reexamination and expungement proceedings in detail and includes information on the shortened response period. Section I provides details on the effective date of the regulations. Section II discusses the background and history of the regulations and legislation. Section III includes a summary of the legislation. Section IV discusses the legislation's impacts and potential problems.