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The United States Patent and Trademark Office (USPTO or Office) amends the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020. The rule establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made; provides for a new nonuse ground for cancellation before the Trademark Trial and Appeal Board; establishes flexible Office action response periods; and amends the existing letter-of-protest rule to indicate that letter-of-protest determinations are final and non-reviewable. The USPTO also sets fees for petitions requesting institution of ex parte expungement and reexamination proceedings, and for requests to extend Office action response deadlines. Amendments are also for the rules concerning the suspension of USPTO proceedings and the rules governing attorney recognition in trademark matters. Finally, a new rule is to address procedures regarding court orders cancelling or affecting registrations.

Statement of Need:

The purpose of this action is to amend the rules of practice in trademark cases to implement provisions of the Trademark Modernization Act of 2020. In addition, amendments are also proposed for the rules concerning suspension of USPTO proceedings and the rules governing attorney recognition in trademark matters, and a new rule is proposed to address procedures regarding court orders cancelling or affecting registrations.

Summary of the Legal Basis:

The Trademark Modernization Act of 2020 (TMA) was enacted on December 27, 2020. See Public Law 116260, Div. Q, Tit. II, Subtit. B, 221228 (Dec. 27, 2020). The TMA amends the Trademark Act of 1946 (the Act) to establish new ex parte expungement and reexamination proceedings to cancel, either in whole or in part, registered marks for which the required use in commerce was not made. Furthermore, the TMA amends 14 of the Act to allow a party to allege that a mark has never been used in commerce as a basis for cancellation before the Trademark Trial and Appeal Board (TTAB). The TMA also authorizes the USPTO to promulgate regulations to set flexible Office action response periods between 60 days and 6 months, with an option for applicants to extend the deadline up to a maximum of 6 months from the Office action issue date. In addition, the TMA includes statutory authority for the USPTO’s letter-of-protest procedures, which allow third parties to submit evidence to the USPTO relevant to a trademark’s registrability during the initial examination of the trademark application, and provides that the decision whether to include such evidence in the application record is final and non-reviewable. The TMA requires the USPTO to promulgate regulations to implement the provisions relating to the new ex parte expungement and reexamination proceedings, and the letter-of-protest procedures, within one year of the TMA’s enactment. The USPTO also proposes under its authority under the Trademark Act of 1946, 15 U.S.C. 1051 et seq., to amend the rules regarding attorney recognition and correspondence, and to add a new rule formalizing the USPTO’s longstanding procedures concerning action on court orders cancelling or affecting a registration under section 37 of the Act, 15 U.S.C. 1119.

Alternatives:

The TMA mandates the framework for many of the procedures in this rulemaking, particularly in regard to the changes to the letter-of-protest procedures and most of the procedures for the new ex parte expungement and reexamination proceedings, except for those indicated below. Thus, the USPTO has little to no discretion in the rulemaking required to implement those procedures. For those provisions for which alternatives were possible because the TMA provided the Director discretion to implement regulations (i.e., fees; limit on petitions requesting expungement or reexamination; reasonable investigation and evidence; director-initiated proceedings; response time periods in new ex parte proceedings; flexible response periods; suspension of proceedings; and attorney recognition), a full discussion of alternatives is provided in the proposed rule.

Anticipated Costs and Benefits:

The proposed regulations have qualitative benefits of ensuring a well-functioning trademark system where the trademark register accurately reflects trademarks that are currently in use.

Risks:

The risk of taking no action is that USPTO would not comply with its statutory mandate under the TMA.