Trade Marks
Posted on 3/3/2021

Modernisation of trade mark law in the USA

The Trademark Modernization Act of 2020 will be implemented in the USA in December 2021.

In December 2020, the Trademark Modernization Act of 2020 (TMA) was signed into law in the USA. It will be implemented by December 2021 and comprises a series of initiatives to further improve the integrity of the federal trademark register.

The act builds on the initiatives already introduced by the US authorities to ensure that Declarations of Use, which have to be filed by US trade mark registration owners at regular intervals, are 100% accurate.

Until fairly recently Declarations of Use could be supported by just one ‘specimen’ showing use of the trade mark for each Class the registration covered. It is now usually necessary to provide many more specimens showing use of the mark to avoid an official objection issuing requiring submission of more documentation. This adds to the cost for those who treat the process of filing Declarations of Use seriously and in accordance with the law, but is a result of the US authorities’ concerns regarding the increasing number of registrants who abuse the system by filing ‘doctored’ specimens and Declarations claiming use of a mark over a much wider range of goods than is accurate.

New procedures which will be available to trade mark owners are two new ex parte post-registration proceedings to cancel unused trademarks. Trade mark owners will be able to file a petition to request that the USPTO Director institutes a proceeding to remove, or, alternatively, re-examine a registration for a trade mark that either has never been used in commerce or was not used in commerce before a certain date. The US authorities can also initiate such proceedings, without a third party making an application, if they discover information which leads them to conclude a registration should be removed or re-examined.

These new provisions should be useful because, if an application for registration is blocked by a registration which appears to have been obtained or maintained via the submission of a Declaration of Use which is open to question, it should be much easier to have this registration removed as an obstacle.

A further, practical, change which seems likely to impact on trade mark owners quite quickly is that rather than allowing 6 months to reply to examination reports, examiners will be able to set shorter deadlines. The USA has for a long time been pretty unique in allowing such generous periods of time to reply to examination reports. This is therefore a change which brings US practice more into line with other countries.

If you would like further advice regarding registering trade marks in the USA or maintaining your registrations there, don’t hesitate to get in touch with one of our trade mark attorneys.

Wilson Gunn