On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”), which amended the Lanham Act, became law. The USPTO has now proposed changes to the Trademark rules of practice to implement the TMA and is seeking feedback on these proposed rules. Some of the proposed changes are described below.

The USPTO is proposing the addition of two ex parte proceedings as means for third parties or the Director to cancel unused registered trademarks. A petition for these proceedings would include a fee of $600 per class.

Expungement Proceeding
This proceeding would allow third parties to request cancellation of some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. Expungement proceedings must be requested between 3 and 10 years after the registration date.

Reexamination Proceeding
This proceeding would allow third parties to request cancellation of some or all goods or services on the basis that the trademark was not in use in commerce for those goods or services as of the filing date or date of the allegation of use. Reexamination proceedings would need to be requested within the first five years after registration.

There are also proposed changes to some existing procedures.

• A new ground for cancellation at the TTAB is being proposed. Under this rule, after the first three years from the registration date, a party can request for cancellation of a registered trademark on the ground that the registered trademark has never been used in commerce.
• The USPTO is proposing to shorten the response period for office actions where applicants and registrants will have to respond to office actions within three months. They would have the option to request just one 3-month extension of time to respond for a fee of $125. The rule proposes this change to be implements in June 27, 2022.

The USPTO has also suggested the following rule changes regarding attorneys.

• Under the proposed rule, attorney recognition will now continue until the applicant revokes the attorney appointment or the attorney withdraws from representation. Also, a change of ownership would not cause a change in attorney recognition without the proper revocation or withdrawal.
• The rules would provide more clarification of attorney obligations when withdrawing from representation, including differentiating when an attorney may request to withdraw and when they must request to withdraw.

Feedback regarding these new changes may be submitted to www.regulations.gov from May 18, 2021 to July 19, 2021.