The Trademark Modernization Act Is Here – What Brand Owners Need To Know

By: Lauren Tagarao

Senior Associate Attorney

The Trademark Modernization Act (“TMA”) enacts significant changes to trademark law as part of a series of initiatives to protect and strengthen the integrity of the U.S. Patent and Trademark Office’s (USPTO) federal trademark register. As a result, trademark owners will have new tools for protecting their brands but should also consider how the new rules can subject even legitimate owners to challenges from competitors. So, what do brand owners need to know before those tools become available later this month?

Take Stock of your Trademark Assets

The TMA establishes two new proceedings to challenge registrations quickly and inexpensively with improper use claims – expungement and reexamination. These proceedings can be initiated by the Director or a third-party petition. If either of these proceedings are successful, the registration can be canceled in whole or in part, as appropriate. If the registrant can provide the appropriate evidence of use, those goods and services may not be challenged in that manner again.

Expungement challenges registrations between three and ten years old on the basis that the mark has never been used in commerce with some or all of the goods and/or services listed in the registration. The ten-year time limit will not apply until December 27, 2023, so until then, any registration over three years old can be challenged for expungement.

Reexamination challenges registrations less than five years old on the basis that the mark was not in use with some or all of the goods/services at the time use was claimed (either when the application was filed or, for intent-to-use applications, when proof of use was required).

To protect against these attacks, registrants should audit their portfolios for accuracy and organize their use records. In the event of an expungement or reexamination proceeding, it’s important to act quickly within the three-month response period. Since these challenges can be raised years after the use in question, registrants should also consider filing all available proof of use in their next maintenance period and establishing comprehensive record-keeping policies to maintain evidence going forward. Finally, registrants should also consider voluntarily removing goods and services from their registration that would not be able to withstand these challenges.

Be on the Lookout

The USPTO has long allowed letters of protest as a way for third parties to submit evidence that supports a particular legal ground for refusal to be considered in the examination of another’s application. The TMA formalizes this practice, sets a two-month deadline for the USPTO to act on submissions, and makes the decision regarding whether to include a letter of protest in the application record final and non-reviewable.

Brand owners can take advantage of this process by monitoring new filings at the USPTO for applications that could infringe on or otherwise harm their registered marks. Once identified, brand owners can act quickly to use this efficient, low cost, and low-profile method to challenge problematic applications. If a letter of protest is not accepted, brand owners can still oppose the application during publication, but a successful letter of protest could accomplish the same goal with a smaller investment of time and money.

Use These Procedures Offensively

Preliminary availability searches are typically the first step for brand owners interested in filing new trademark applications. And now these searches will be even more helpful in crafting a filing strategy since the TMA’s new procedures can also be used offensively to challenge problematic marks. By knowing what they’re up against, brand owners can evaluate if challenging another’s rights through these new avenues is a quicker, discrete, and more affordable option than rebranding or duking it out in court.

With all of the changes happening, it’s clear that collaboration between trademark counsel and brand owners is more important than ever. Renner Otto’s trademark team can assist with use audits, competitive monitoring watches, and crafting the perfect plan to protect and grow your brand.