The United States Patent and Trademark Office (USPTO) has been positively impacted by the regulations implemented with the Trademark Modernization Act (TMA). Effective December 18, 2021, the new bill introduced several mechanisms to boost efficiency in trademark registration. 

In this article, you will find a full overview of the Trademark Modernization Act.  

Trademark Modernization Act – What You Need to Know  

The new legislation allows trademark owners to rely on robust tools for challenging registered marks based on non-use filing directly with USPTO. In the past, the only option to challenge a mark would be filing for cancellation, which often results in a time-consuming and costly procedure. 

On the other hand, the provisions incentivize trademark owners to proceed with timely audits of their federally registered marks. It is not hard to find owners of USPTO marks that fail to act proactively in the maintenance and renewal of registration.  

For example, deleting goods or services from registrations that are not actively in use is vital for avoiding non-use challenges based on the TMA. The TMA also benefits larger companies by protecting their brands against smaller infringers 

In such cases, it is not easy to establish whether the infringer’s actions incurred damage to the larger company’s business, reputation, or goodwill. With the TMA, larger companies can easily obtain injunctive relief against infringers.  

Expungement vs. Reexamination  

The TMA introduced two new options for challenging existing registrations based on non-use, which are expungement and reexamination.  

A challenging party may file to expunge a trademark registration if there is evidence that the registered mark has never been used in commerce. It is important to pay attention to the deadlines when filing for expungement. 

It is only possible to challenge marks between the third and tenth anniversaries of registration. Challenging registered trademarks older than ten years may require cancellation, while newer trademark owners have the chance to put the mark into use. 

However, the ten-year limit does not apply until December 27, 2023, which allows anyone to challenge a registered trademark at least three years old. The outcome of a successful challenge application is the removal of any goods or services not in use under the federally registered mark.  

On the other hand, reexamination allows challengers to request cancellation of trademark registration based on the fact that a trademark was not in use on or before the relevant event.  

US trademark law specifies that the ownership rights on a mark derive from its active use in commerce associated with goods or services. If the underlying application was filed based on the use of the mark in commerce, the relevant date considered by USPTO is the application’s filing date. 

Conversely, if the underlying application was filed based on an intent-to-use, the relevant date considered by USPTO is: 

  • The date an amendment of alleged used was filed by the trademark owner, or  
  • The date of expiration of the statutory deadline to file a statement of use  

Protect Your Trademark Rights – Immediately Seek Expert Legal Guidance 

It is not easy to navigate the complexity of US trademark law without the guidance of a well-versed legal advisor. Contact Florida Attorney Romy B. Jurado today by calling (305) 921-0976 or emailing [email protected] to find the best trademark protection strategy for your case.