New Changes Coming to Trademark Registration

The USPTO has released new rules that will apply to trademark registration and court proceedings starting December 18, 2021. These rules establish new procedures, as well as changes to the old procedures, that have the potential to affect all levels of trademark law from registration to litigation. There are three main changes to the existing procedures: new grounds for expungements for TTAB Cancellation Proceeding, a shorter three-month response period for office actions, and third-party submissions during the examination.

In the past, the existing grounds for TTAB cancellation were limited to nonuse and abandonment. The new trademark legislation now allows for the expungement of a registered trademark that has never been used in commerce. This gives applicants another option when attempting to get a prior trademark that is not being used canceled.

Instead of the six months previously allowed for response to office actions, it has shifted down to three months. While an applicant or registrant can request a single three-month extension for time to respond, there is a $125 fee associated with that. The consequence of not responding will result in that the application being abandoned or canceled/expired. However, this particular part of the law is delayed going into effect until December 1, 2022.

The third change to existing procedures is the third-party submissions during the examination, also known as letters of protest. This section provides statutory authority for the USPTO longstanding letters of protest practice that allows third parties to submit evidence, prior to registration, that establishes the relevant ground for refusal in the examination. The statutes newly published set a 2-month deadline for us to act on these submissions, charge a fee for them, and provide that the Director’s decision on a letter is final and non-reviewable.

These changes, with the exception of the office action period, will be taking action starting December 18, 2021. Have these changes in trademark law affected you? If you have questions or need professional help with your trademark registrations or applications then enlist the help of the professionals at The Center for Financial, Legal, and Tax Planning, Inc. Please contact us at (618) 997-3436 for more information.