Trademark Modernization Act Signed Into Law for Federal Trademark Owners in New York and Beyond
The United States Patent and Trademark Office signed the Trademark Modernization Act (“TMA”) into law last year, prompting future changes for federal trademark owners in New York state and nationally. The Act will formally be implemented on December 27th, 2021. Although the TMA offers trademark owners additional tools, it also expands trademark cancellation mechanisms that might cause some trademark holders to lose their federal trademark.
Here are some key changes to the TMA:
- New proceedings to cancel registrations: The TMA’s new expungement and reexamination process allows third parties to request cancellation of some or all goods or services in a registration if the registrant “never used the trademark in commerce” with those goods and services. Any goods or services cancelled from these proceedings will no longer be covered by the trademark registration.
- Shortened time to respond to refusals: Applicants currently have six months to respond to office actions. Beginning June 27th, 2022, applicants and registrants will be required to respond within three months.
- Third party submissions of letters of protest: Previously, the TMA informally authorized third parties to submit letters of protest to the USPTO regarding a pending trademark’s registrability. The recent changes with the TMA outline a list of requirements for a letter of protest and more formal contingencies for submission.
You can access the full list of new and changed procedures by clicking here. USPTO is still accepting comments to proposed rule changes, and final rules will go into effect December 27th. Our attorneys are ready to assist you in complying with these new rules.
You can read more about Bleakley Platt & Schmidt’s intellectual property practice group here. Our firm provides focused, resourceful, and determined litigation support on a broad spectrum of trademark law, including trademark copyright, patent, licensing, and protection of trade secrets. To schedule a consultation with one of our attorneys, call us at 914-949-2700 or email us at info@bpslaw.com.