August 9, 2021
In late 2020, Congress passed the Trademark Modernization Act of 2020 (“TMA”), the first major revision to U.S. trademark law in years. The TMA will have an impact on many current and prospective trademark owners (for more information on how the TMA affects trademark owners outside the U.S., click here).
The TMA directed the United States Patent and Trademark Office (“USPTO”) to prepare regulations that will implement the law. The USPTO recently published their initial draft regulations and accepted public comments on them. The regulations clarified several aspects of the TMA, particularly regarding the new “Reexamination” and “Expungement” proceedings, which allow anonymous third-parties to challenge your trademarks and have them cancelled. The trademark portfolio of a firearms company is critically important to the strength and value of its brand, and ensuring that these assets are protected is equally important.
Challenges to Registrations
The TMA created entirely new ways to challenge trademark registrations on the basis that they are not in use in commerce. These “Expungement” and “Reexamination” provisions allow any person to petition the USPTO to cancel an existing trademark registration if non-use of the trademark can be established. If the USPTO deems that a petition has merit, it will initiate the proceeding. Unlike current Petitions to Cancel a trademark, this allows the original petitioner to avoid the costs associated with litigating before the Trademark Trial and Appeal Board.
The draft regulations published by the USPTO set the procedures for Expungement and Reexamination. Crucially, there is no limit on the total number of Petitions for Reexamination or Expungement that may be filed against a particular registration. The draft regulations also allow the petitioner to remain anonymous, and their identity will not be shared with the owner of the target trademark.
The USPTO does not believe that this process will be abused. However, the USPTO did specifically request public comments related to curbing the potential for abuse. Numerous comments offered suggestions to reduce potential abuse, including letting the trademark owner know the petitioner’s identity or limiting the number of proceedings to one per petitioner per trademark.
The public comment period has closed, and the USPTO will now review the comments and draft final regulations. Once finalized, most of the regulations will go into effect on December 27, 2021.
In the interim, there may not be a sure method to avoid Petitions to Reexamine or Expunge a trademark, but there are ways to prepare for any challenges to your trademarks. The IP-Trademark Team at Renzulli Law Firm carefully follows developments in intellectual property law and can work with you to ensure that your IP portfolio is ready for the new regulations. If you have questions about how the TMA or other legal developments may affect you, your products, or your brand, please contact John F. Renzulli.