May 13, 2022 – In 2020, President Trump signed the Trademark Modernization Act (TMA) into law.  After initial regulations were released and commented on by the public, final regulations were published and several key provisions of the law went into effect in December, 2021.  You can read more about the history of the TMA’s adoption and implementation here and here.
The TMA is the most substantial change to United States trademark law in decades, but how does it affect firearms companies?  Now that key portions of the law that provide for Petitions to Expunge or Reexamine Trademarks have been in place for five months, we are starting to see the benefits and risks of these petitions.
A Petition to Expunge or Reexamine a Trademark alleges that a trademark has either never been actually used in commerce, or was not used on the date when the trademark owner claims it was first used.  If the petitioner is able to provide sufficient evidence to support these allegations, the USPTO will initiate a formal Expungement or Reexamination proceeding and demand that the trademark owner respond within three months and provide evidence that the trademark was in fact in use.  Since December, only 80 petitions have been filed, and less than a quarter have led to formal proceedings.  These proceedings are all recent, and none of them have been resolved.  However, patterns have already emerged.  The only petitions that led to proceedings were prepared by attorneys and supported by substantial evidence; simply providing the results of an Internet search for the trademark is not sufficient. 
When the first draft regulations implementing the TMA were published, trademark attorneys were concerned that the TMA would result in a flood of anonymous attacks on valid trademark registrations.  Defending against these proceedings would be expensive and time consuming, and it was feared that unscrupulous businesses could use these petitions to harass their competitors.  That has not yet happened.  The most crucial change from the draft regulations is that petitions are not anonymous, which may have kept the bad actors away for now.  Petitions have mostly been filed against trademarks registered by foreign companies that may be “trademark squatters” who hoard trademarks for the express purpose of preventing their use by legitimate businesses.  However, the TMA is still a young law, and new petitions are being filed at an increasing pace. 
So, what does this mean for your firearms company and the protection or expansion of your brand?  If you own trademarks, it means that you should ensure that you have evidence that you are currently using your trademarks and were using them when you informed the USPTO that you were.  If you do not own trademarks, or could not register the trademark you wanted because another company had already registered it, the TMA may provide the tools you need to eliminate an unused mark so you can file an application to register the mark.
The IP-Trademark Team at Renzulli Law Firm carefully follows developments in intellectual property law, including the TMA, and can work with you to ensure that your IP portfolio is adequately protected, or provide a consultation regarding possible expungement of unused trademarks to expand your portfolio.  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 or Chris Renzulli.