Haynes and Boone, LLP Partner Joseph Matal talked with Intellectual Property Magazine about the U.S. Patent and Trademark Office (USPTO) notice of proposed rulemaking to implement the Trademark Modernization Act (TMA) and the important issues affected by it.
Below is an excerpt:
The U.S. Patent and Trademark Office (USPTO) has issued a notice of proposed rulemaking to implement the Trademark Modernization Act (TMA)… The office proposes to amend the rules of practice in trademark cases to implement provisions of the TMA of 2020. As such, the USPTO is seeking feedback on the new proposed rules, which establishes ex parte expungement and reexamination proceedings for cancellation of a registration when the required use in commerce of the registered mark has not been made.
…Haynes and Boone's Joseph Matal said that the USPTO has put forward some “thoughtful rules that mark a strong first step" towards implementing the TMA.
He stated: "The relatively low $600 filing fee and quick two-month response period, in particular, indicate that they are serious about making this an accessible and effective tool for clearing deadwood from the trademark register.”
He added: "The proposed rules address or at least flag for public comment all of the big issues, such as what kind of search should be required for the new proceedings and what evidence will be needed to rebut a prima facie case of nonuse.”
"They also highlight some latent but nevertheless important issues, such as whether petitioners should be allowed to remain anonymous, and whether a non-response from the registrant should also lead to an audit of the registration.”
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