Modernization of Trademark Process
Last year, just before Christmas, something significant happened, and it wasn’t related to the holiday season. Instead, the Federal Trademark Office began putting into motion the expected rules and regulations for the Trademark Modernization Act of 2020. This omnibus federal law change overhauled the registration process and created a broad scope and field change on how trademarks would be authorized going forward.
Removing Old Trademarks
The cancellation of old trademarks was revamped with a dual set of new ex parte processes now known as “expungement” and “reexamination.”
The expungement process involves a petition to the U.S. Patent and Trademark Office (USPTO) for a cancellation of a part or all of an existing mark that also has never been applied in commerce usage. This particular process is limited and available only until December 18, 2023, but it is expected to help sweep out old, unused trademarks or portions of them, clogging up the system and making room for new ones.
After this key date, the rule changes, and an expungement petition can only be filed in the third and then the tenth year of a given trademark being approved.
Re-examination allows a petition on a more technical basis. Instead of a broad unused approach, this petition looks for an expungement of all or part of a mark if it was 1) not used correctly by the application date or 2) by the statement of use deadline. These petitions apply to trademarks in place after five years of their creation.
Additionally, the USPTO can trigger an expungement or re-examination on its own, as well as an internal regulatory power with limited scope.
Letters of Protest Window Expanded
The TMA procedure overhaul has also changed how letters of protest are handled by the USPTO. Normally, the letter of protest allows a third party to intervene in a trademark request within 30 days of its publication or beforehand.
Now, as a result of the 2020 Act, the USTPO has to include protest letters up to two months after publication, creating a broader window for issue identification.
For filers, this creates even greater pressure to pre-empt such challenges on the front end with increased due diligence, create extremely accurate descriptions, maintain a solid chain of custody on records and specimens, and confirm usage on the first date of usage for all applicable goods and services.
Inter Partes Review on Patents
Folks on the patent side of the house should also be aware of the inter partes review. This fairly new trial process opens a new challenge to a patent when an argument is made that the authorization was already taken by prior patented art.
This action is triggered by a third party filing up to nine months after a patent is granted or reissued or if a post grant review is authorized. In either case, the patent owner needs to respond to the petition filed; it can’t be ignored. Again, prior research and due diligence is essential to avoid this boondoggle from occurring after the fact of a patent authorization.
Trademark Lawyers in San Francisco
Given all the above, there is no question that a party considering a new trademark or patent application needs to ensure that all possible prior record research and due diligence have been completed correctly. Otherwise, the entire USPTO effort could be a massive waste of time.
Among trademark lawyers California professionals, James Braden has been a consistent subject matter expert on the USPTO overhaul and landscape change for filing and diligence research. There is no question in this avenue that prevention is definitely worth far more than the cost of the cure after the fact, and James Braden in San Francisco can help make that protection happen with your next USPTO application. Call to find out more.