Yes, you read that correctly. Trademark practice at the U.S. Patent and Trademark Office as we know it is about to change (well, at least in part).

The USPTO recently published its final rule implementing certain provisions of the Trademark Modernization Act of 2020. The TMA was enacted to combat the recent uptick in fraudulent filings (a sizeable share coming from China) and restore integrity to the registry. As a result, several key changes to the trademark rules of practice went into effect in December 2021, with more to come in December 2022. According to the USPTO, “Individuals, businesses, and the USPTO [will] now have new tools to clear away unused registered trademarks from the federal trademark register and the USPTO [will have] the ability to move applications through the registration process more efficiently.”

Here is a quick rundown of the key changes:

1. Ex Parte Petitions for Expungement and Reexamination. Among these new “tools” are two new ex parte proceedings, expungement and reexamination, by which any third party can seek to cancel some or all of the goods and services in unused registered trademarks.
   
   These new proceedings appear quite attractive on paper: they are relatively inexpensive ($400 per class to file), non-adversarial and can be an efficient way to remove “deadwood” and block marks from the registry (short of filing a TTAB cancellation proceeding or lawsuit). Moreover, petitions can be filed anonymously, which may be particularly useful for brand owners that want to avoid retaliation or keep plans for brand expansion a secret. However, the Director of the USPTO may ask for identifying information in particular cases. Petitioners will need to conduct a “reasonable investigation” into the non-use of the mark and include supporting evidence in the petition. What is “reasonable” will be determined on a case-by-case basis; a single internet search engine screenshot isn’t going to cut it, but petitioners don’t necessarily need to go as far as hiring an investigator for a detailed report.
   
   The final rule provides trademark practitioners good guidance on petition requirements, investigation standards, timing and what to expect in the proceedings.
   
   Petitions for expungement and reexamination are available as of December 27, 2021. But brand owners beware! Not only do your competitors now have another tool in their arsenal for challenging your rights, but the USPTO Director can file such proceedings against your registration(s) at their own initiative (similar to the current USPTO post-registration audit program). Therefore, before lodging a demand letter or turning down a request for consent, brand owners should consider the vulnerability of their own registrations.
2. Shorter Office Action Response Periods. Beginning December 1, 2022, applicants (excluding Madrid Section 66(a) applicants) and registrants will have only three months to respond to Office actions, rather than the usual six. Don’t worry, you can still request the other three months via a single extension of time for a fee of $125. This rule change is meant to increase efficiency at the USPTO and shorten the overall time for trademark application examination.
3. New Nonuse Ground for Cancellation Before the TTAB. Expungement is a now a ground for cancellation through the TTAB, that is, a registration can be subject to cancellation on the ground that the trademark has never been used in commerce. This ground for cancellation is available any time after the first three years of registration.
4. Letters of Protest. The TMA provides express statutory authority for the USPTO’s existing letter of protest procedure. There is also now a two-month deadline for the USPTO to act on LOPs, and the Director’s decision on an LOP is final and non-reviewable.
5. Attorney Designations that are Mistaken, False or Fraudulent. If an attorney is mistakenly, falsely or fraudulently designated by an applicant, registrant or party to a proceeding without the attorney’s prior authorization or knowledge, recognition of that attorney is ineffective.

The full rule, which is relatively easy to follow, is available here, and the USPTO’s new Trademark Modernization Act webpage, with helpful information in Q&A format, can be found here.