Signed into law in December 2020, the Trademark Modernization Act (TMA) was part of a COVID-19 relief package. The Act was assessed by several authorities of the segment before its introduction to US Congress, including the International Trademark Association and the United States Patent and Trademark Office (USPTO).
In this article, you will have a full overview of the Trademark Modernization Act.
Florida Trademark Modernization Act – The Fundamentals
The USPTO is the federal agency responsible for regulating the trademark system nationwide. As the core trademark registration system, they must have precise knowledge of which marks are actually being used in commerce across different states.
One of the primary reasons behind the introduction of the TMA was a significant increase in the number of fraudulent trademark applications, which started to undermine the system’s goal of ensuring efficiency and fair competition.
Another factor that heavily influenced the TMA was the exponential decrease in the availability of marks for new applicants.
With the introduction of the TMA, USPTO can establish new proceedings to guarantee maximum efficiency and clear all “dead wood” (registered marks not being used properly) from their system.
This way, they have proper tools to react against an increasing depletion of available marks, minimizing the costs involved in trademark searches, and promote fair competition among registrants.
Trademark Modernization Act – Taking a Closer Look
Eliminating Dead Wood
Most provisions in the TMA have the goal of implementing new procedures that allow the system to filter out “dead wood” efficiently and timely.
Under the TMA, it is possible to challenge improper claims of “use in commerce” in both new and old registrations. Additionally, USPTO receives anonymous challenges made through US law firms. Please note that identification may be required by the agency’s Director in the event of abuse filings.
Expungement vs. Re-examination
The new Act introduces two new proceedings – “Expungement” and “Re-examination.” The first proceeding permits an expedited challenge of registered marks that have never been used in connection with any of the listed goods or services.
The later proceeding allows challengers to file a Petition requesting re-examination of registration when the mark was not in use on the listed goods or services on or before:
- A use-based application’s filing date, or
- The filing date of an “Amendment to Allege Use”
Make sure to consult with an expert trademark attorney for further information on applicable fees, the required paperwork, and deadlines involved in the process.
If applicable, the TMA establishes that the Director can institute a proceeding without any further involvement of a petitioner. After the Director’s decision, the owner of the mark has a three-month deadline (with a one-month extension upon paying a fee) to:
- File a response and demonstrate the use of the mark in business, or
- Voluntarily delete the goods or services challenged
In case the owner fails to respond in time, the Director has the autonomy to cancel the challenged goods or services and the registration in its entirety.
Within three months of the decision for cancellation, the Trademark Trial and Appeal Board (TTAB) or the Director can receive the owner’s appeal.
Florida Trademark Modernization Act – Contact Jurado & Associates, P.A. Today
The only reliable method to navigate the provisions of the new TMA is working with a well-versed trademark attorney in Florida. Contact Jurado & Associates, P.A. by calling (305) 921-0976 or emailing [email protected] for an individual consultation.