Online Discussion Group - Trademark Modernization Act: New Tools to Fight Bad-Faith Trademark Filings

This roundtable will explore the Trademark Modernization Act (“TMA”), related regulations, and other U.S. Patent and Trademark Office (“USPTO”) programs that offer new tools for brand owners to challenge bad-faith trademark filings.  Most significantly, the TMA creates two new ex parte procedures: expungement, which allows for full or partial cancellation of registrations because the mark has never been used for the subject goods or services; and re-examination, which allows for full or partial cancellation of registrations because the mark was not used for the subject goods or services on or before the relevant date.  These new procedures offer the possibility of cancellation faster and at lower cost than through traditional TTAB cancellation petitions.  The TMA also codifies the letter of protest procedure, a long-standing mechanism allowing third parties to raise issues with pending applications.

In tandem with the TMA, the USPTO has initiated an anti-fraud strategy, coupling the TMA’s new ex parte procedures with enforcement efforts that include post-registration audits, show cause orders, and the issuance of sanctions.

With a significant increase in trademark filings, brand owners have experienced delays in examination of their applications and greater need for their own enforcement activities.  Along with other efforts by the USPTO, the procedures discussed in this roundtable are expected to help combat and mitigate the impact of fraudulent filings.