Key and Upcoming Changes from the Trademark Modernization Act: What You Need to Know

By Karen Frank and Sabrina Larson 

In December 2020, Congress passed the Trademark Modernization Act (the “TMA”), providing for numerous changes in the processes for registering trademarks and maintaining trademark registrations in the United States. Key elements of the TMA come into effect on December 1, 2022. This client alert discusses important terms of the TMA that companies should be aware of that provide new tools to clear unused trademarks from the U.S. Trademark Register and for the Trademark Office (the “USPTO”) to move applications through examination more efficiently.

Key terms of the TMA:

Office Action Response Time Shortened to Three Months
To-date, applicants for trademark registration have had six months to respond when the USPTO raises issues on an application (an “Office Action”). The TMA shortens the response time to three months. The TMA provides the option for Applicants to obtain one three-month extension to respond to an Office Action, for a $125 fee. This shortened response time is expected to significantly speed up the timing for obtaining trademark registrations.

Two New USPTO Ex Parte Proceedings
The TMA creates two new proceedings under which anyone can petition the USPTO to investigate the validity of a U.S. trademark registration. Under these so-called “ex parte” proceedings, a party can petition to have a trademark registration to be reexamined with regard to select goods or services, or expunged entirely, based on a reasonable investigation showing that the mark has not been used for some or all of the goods or services covered by the registration. The petition for expungement may be filed between 3 and 10 years after a mark is registered, and the petition for reexamination must be filed within 5 years of registration. These new Trademark Office proceedings create opportunities to clear the U.S. Trademark Register of registrations that are based on inaccurate claims of use in commerce in the United States. The proceedings are expected to be faster, more efficient, and less extensive (and generally less expensive) alternatives to more formal proceedings before the Trademark Trial and Appeal Board.

Trademark Litigation: Presumption of Irreparable Harm
The TMA creates a statutory nationwide uniform standard of a presumption of irreparable harm to be applied in trademark cases where the trademark owner establishes infringement. This resolves a previous circuit split among the courts and reduces the evidentiary burden on trademark owners seeking to obtain injunctive relief in litigation.

If you have any questions about the TMA or seek counsel regarding trademarks, please do not hesitate to reach out to Karen Frank or Sabrina Larson.