Verna Law Video Blog 36: The Trademark Modernization Act of 2020

Lightly-edited transcript of the blog entry:

Hi, I’m Anthony Verna, managing partner, Verna Law.

Let’s talk a little bit about the Trademark Modernization Act of 2020. That’s right. Congress passed a COVID spending bill and tucked in some other legislation.

Congress, you need to stop doing that! One bill one thing, but, nope, Congress, isn’t going to do that.

So, the Trademark Modernization Act of 2020 buried in the middle of the COVID spending bill, let’s talk a little bit about that. What it does.

Number one, third parties may file petitions for expungement or reexamination. That’s right. The biggest change to the current USPTO procedure is that there’s a new provision. There are ex parte expungement petitions against registrations for trademarks that have never been used. Ex parte means it’s not really going to be a two-party procedure. It’s a one-party procedure. So you, as one party who you filed to show that this trademark has never been used before, that’s how we get going on, on this expungement.

The third party, can petition for expungement in connection with some of the goods and services or all of the goods and services. The act specially notes that the registrant’s evidence of use is not subject to the stringent rules, applied to the submissions of use specimens in the application process. Marks registered from outside the U S who obtained the registration based on a home country registration or via the international registration process may present evidence of excusable non-use to avoid that expungement. Now, why can third parties do this? We’ve seen a jump – a jump! – in the number of registrations that have happened internationally, mainly from China. They really aren’t real, and frankly,  have never been used in commerce. So the USPTO has been asking Congress for a way to simplify the process, to get rid of registrations that actually haven’t been used in the United States.

A third party can also seek reexamination of a registration. If a party submits evidence that a reasonable investigation shows that a trademark was not actually in use at the time of filing based on actual use or at the time that the applicant claimed use the difference between an expungement and reexamination are a expungement, is for cases in which a Mark has never been used. Whereas re-examination is for cases in which the Mark was not in use at the time that the use was claimed and be a petition for reexamination must be filed within five years of the issuance of a registry.

Number two, third-party evidence is now allowed in trademark applications. That’s right, the Trademark Modernization Act of 2020 authorizes the USPTO to permit third parties to submit evidence supporting a refusal to register a trademark and to collect a fee from that third party, making the filing.

Let’s remember our previous  video, where we talked about the amount of money that is going to be raised for the PTO in 2021, because fees are going up!  Well, here’s a creation of a totally new fee, which basically does enhance the letter of protest that third parties have been able to file for many, many years. However, now, a third-party can really throw in that evidence and filed yet another fee, but it does expand the letter of protest. And it does help a third-party to submit evidence of non-use of the applied-for trademark.

Number three, time periods for responses to office actions may be shorter, but extendable, right? Currently the USPTO issues an office action and reviews and registration are requiring further information or action. On behalf of the applicant, the applicant has six months to respond  The new act permits the USPTO to set a shorter response period, if it wishes.  It doesn’t necessarily have to, but you can still be extendable to a total of six months. And then the USPTO is authorized to do what you guessed: It can char