Does the Trademark Modernization Act (TMA) have different starting dates?
Yes, the Trademark Modernization Act has different effective dates depending upon the new rules. Some effective dates for TMA begin in December 2021 while other provisions go into effect in December 2022.
When can third parties begin requesting cancellation of non-used trademark registrations?
Third parties can begin requesting the new procedures for canceling some or all non-used goods or services in a trademark registration starting December 27, 2021. As discussed below, Applicants should keep this in mind in responding to likelihood of confusion Office Actions.
When will the new expungement ground for a TTAB trademark cancellation be available?
Starting December 18, 2021, a plaintiff in a TTAB cancellation proceeding may include a ground of expungement to cancel a registration that is at least 3-years old. Third parties may still include the old-school grounds of abandonment and nonuse, so expungement can be an additional claim to the conventional non-use grounds.
When will new Office Action deadlines under the Trademark Modernization Act take place?
The shorter 3-month deadline for responding to trademark Office Actions will go into effect on December 1, 2022. This reduced timeframe will not apply to Madrid applicants. A single 3-month extension of time may be requested within the first three months for a USPTO fee of $125. Unlike patent Office Action extensions which are requested at the time of filing the response and retroactively applied, a trademark Office Action extension will not be retroactive.
How can the Trademark Modernization Act enable a more effective Office Action response strategy?
If you have received a trademark Office Action containing a likelihood of confusion refusal, it would be worthwhile to consider whether the cited trademark registration may be available for either a reexamination procedure or expungement procedure. If so, consider requesting a non-use procedure against the cited registration(s).
The availability of these new nonuse procedures may also serve as leverage to negotiate a consent agreement if the respective marks are sufficiently distinguishable.
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