AIPLA Comments on Implementation of the Trademark Modernization Act February 3, 2021

AIPLA provided feedback to the USPTO on the implementation of the Trademark Modernization Act (TMA). The feedback addresses three aspects of the TMA: general comments, comments on flexible response times, and comments regarding ex parte expungement and ex parte reexamination proceedings.

The implementation of the TMA raises multiple issues that need to be addressed and various issues that should be considered as the Director determines how to implement the TMA. In addition, AIPLA noted that additional guidance from the Office on aspects of the TMA may be needed.

AIPLA understands that one of the primary reasons the TMA was passed is to improve the accuracy of the Register so that it reflects marks in use and does not contain registrations that should not be maintained or should not have been granted in the first place, for example, due to fake specimens, other fraud, or error. AIPLA agrees that this is a laudable goal, and requests that the Director provide ample guidance to all parties that will be impacted by the new provisions set forth in the TMA.

AIPLA continues to advocate for a shorter response period to Office Action refusals that include only ministerial or procedural objections. AIPLA provides feedback on the following subsections regarding ex parte expungement and ex parte reexamination proceedings: Reasonable Investigation by Petitioner/What Constitutes a Prima Facie Case?; Showing Necessary to Rebut a Prima Facie Case of Nonuse; Response Deadline for Rebuttal of a Prima Facie Case of Nonuse; Limitation on Later Proceedings and Estoppel; Possibility of Filing a Single Petition for Expungement and Reexamination; Requests for Reconsideration; and, Appeals to the Trademark Trial and Appeal Board.

To read the full comments, please open the letter by clicking the file download