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By Purple Fox Legal

March 2, 2022

On December 18, 2021, the Trademark Modernization Act (TMA) went into effect. This important legislation could affect your small business. In simple terms, the TMA is responsible for “modernizing” the Lanham Act, helping to reduce the number of fraudulent applications and lower the amount of dead weight on the process.

In this article, the TMA and what it really means for small businesses is explained. 

The Trademark Modernization and the Lanham Act: What Changes?

As mentioned above, the TMA is actually a revision to the Lanham Act, modernizing the original 1946 Lanham Act that’s responsible for providing the national system of trademark registration. What it does, for the most part, frees up significant space when it comes to applying for and/or expunging a trademark, and makes the entire process more efficient. 

Not only does the TMA help clear away unused trademarks (making more available to you), but it also gives the U.S. Patent and Trademark Office  (USPTO) more time to focus on genuine applications.

Everything You Need to Know about the TMA

So what does this mean for your small business? Brand owners can now enjoy a simpler process for applying for or protesting trademarks. That’s because the tools provided by the TMA are responsible for streamlining the entire process. These are the 4 things you need to know about the TMA.

1. Ex Parte Proceedings are Easier and More Efficient

New proceedings were created with the enactment of the TMA related to trademark expungement and reexamination. 

• Trademark expungement can be requested if it has been between 3 and 10 years after the registration date, and the trademark was never used in commerce in connection with some or all of the registered goods and services. 

• Trademark reexamination and possible cancellation can be requested if the trademark wasn’t used in commerce  in connection with some or all of the registered goods and services as of the “relevant date,” which is 
  • The application date for use-based applications
  • The later of the filing date of the amendment to allege use or the expiration of the deadline to file a statement of use for intent-to-use based applications.

The purpose of these new proceedings is to lower the burden on the USPTO by helping them shed dead weight, fraudulent applications, and inactive trademarks. The new proceedings provided by the TMA will not only be helpful for this purpose, but also for streamlining the protest process. 

2. The Response Period has been Shortened

In another effort to help streamline the process and make it more effective, the response period for registrants has been shortened. This means that applicants must reply to office actions within 3 months or risk an expired registration. If you need longer than 3 months to reply, for any reason, an extension fee of $125 is required. 

3. The Letters of Protest Review Now has a Deadline

Applicants aren’t the only ones seeing stricter deadlines. When it comes to letters of protest, the USPTO now has a 2 month deadline to review submissions of evidence. No more worrying about submissions sitting there for months at a time, the USPTO Director’s decision on evidence acceptability will be finalized within 2 months after it was submitted. 

4. Certain Documentation is Now Required

Installing deadlines isn’t the only way to make the trademark process more effective, the TMA is also focused on minimizing the fraudulent applications that make their way into the system. That’s why certain documentation, like an attorney’s authorization for representation and court orders for cancellation, will now be required. There will be no more taking requests and claims at face value. Without the proper documentation, they simply will not be effective.