U.S. Trademark Office Changes and the Impact: Rules to Implement the TMA, Specimen Requirements, Foreign Applicants

Description

Recently, the USPTO issued a notice of proposed rulemaking setting forth proposed changes to the trademark rules of practice to implement the TMA. When implemented, the proposed new rules, changes to existing procedures, and other rules changes will give trademark owners new tools to seek cancellation of trademark registrations covering marks not used in commerce, and more clarity for the letters of protest procedures, and at the same time, give the USPTO the ability to move applications through the registration process more efficiently. Comments to the proposed rule changes were due no later than July 19, 2021.

There have been several changes at the U.S. Trademark Office over the past year that impact trademark attorneys' practice. These changes include amended rules governing trademark specimen requirements. The USPTO tightened its requirements and has given examiners more latitude to make inquiries to clarify whether a specimen is in use in commerce. These changes conform to existing statutory requirements and precedential case law.

In addition, foreign-domiciled trademark applicants, registrants, and parties to trademark proceedings before the USPTO and the TTAB must now be represented by a U.S.-licensed attorney. Furthermore, the USPTO instituted mandatory electronic filing in the USPTO and the TTAB. With limited exceptions, all submissions must be made using the USPTO's online Trademark Electronic Applications System and the TTAB's online Electronic System for Trademark Trials and Appeals.

Listen as our authoritative panel of IP attorneys discusses the USPTO's recent rule changes and proposed changes to implement the TMA. The panel will also discuss the heightened standard for cancellation based on fraud. Lastly, the panel will examine the impact of these changes and proposed changes on U.S. trademark practice and offer best practices for operating within the new rules.