Oct 23, 2022Legal
Trademark Modernization Act: USPTO Shortens The Trademark Office Action Response Deadline To Three Months


The Lanham Act of 1946 has served as the primary federal trademark statute of law in the U.S. It regulates the entire trademark landscape, starting with the application, opposition, and registration, as well as prohibiting the acts of trademark infringement, trademark dilution and false advertising. Since its enactment, this act has been amended several times in order to enhance and update it. Especially significant was the Trademark Counterfeiting Act of 1984, which made the intentional use of counterfeit trademarks a federal offense. Another major impactful update was the Anticybersquatting Consumer Protection Act, designed to protect businesses from cybersquatters who registered domain names containing trademarks with no real intention of building a legitimate website but with the simple purpose of selling that domain name to the trademark owner or a third party.

In recent years, as Patexia has analyzed in its Trademark Intelligence reports as well as in Patexia 137: Trademarks Originating From China Continue to Flood USPTO for the Second Year, there has been an unprecedented growth in the number of trademark filings in the recent years. The growth is mainly due to the rise of trademark applications originating from China. To ensure that the growth was natural and came from market expansion, the USPTO made several changes in mid-2019 to the trademark prosecution practice requiring all applicants who were not domiciled in the United States to engage the U.S. licensed attorneys to file and prosecute trademark applications. However, this move didn't seem to give results right from the start. One of the most active attorneys in trademark prosecution being suspended for two years in 2022. He was approached by multiple Chinese entities and didn't set a limit to his volume of work resulting in his words, “rushed and sloppy applications, sometimes spending from 2.5 to 10 minutes to review the applications and determine the legitimacy of the information.”

This increase in suspicious trademark filing activity called for stronger action, so in 2020, The Trademark Modernization Act was passed, which brought significant changes to the trademark landscape. With its implementation, trademark owners have two more options to challenge a trademark registration. Expungement is a procedure that challenges registered trademarks that have never been used commercially in the goods or services listed in the application. Reexaminations are conducted on the basis that the mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date. The USPTO implemented these new procedures in 2021, and on December 21, 2021, they received the first petition for expungement. A week ago, USPTO announced another implementation of the Trademark Modernization Act by shortening the time of office action responses. It is effective as of December 3, 2022, and now trademark applicants will have three months instead of six to respond to the office actions  issued during the examination of their applications from the USPTO. This rule will apply only to pre-registration office actions, while the changes to the post-registration response period will be implemented on Oct., 7, 2023. Realizing that sometimes the response can be complex and may require additional time, applicants get a three-month extension by filing a form available at the USPTO website for a $125 fee. If the response to office actions doesn't meet the new deadline, then the application will be considered abandoned, and for its revival, you will need to file another form for $150.00 if the petition is filed electronically or $250.00 if it’s paper filed.

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