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Proposals by the US Patent and Trademark Office (USPTO) to amend the Trademark Modernization Act of 2020 in a bid to improve the integrity of the trademark register have been criticised by lawyers.
The office has launched a comment notice period for proposed rulemaking for the Trademark Modernization Act, inviting the public to give their opinion on the proposed amendments.
According to the Winterfeldt IP Group, the majority of the changes look to “improve accountability and protect the integrity” but require “new burdens and costs on both trademark owners and practitioners.”
Among the proposed changes, the USPTO is looking to establish new ex parte reexamination and expungement proceedings that give the office the power to remove registration categories for goods and services for which a mark has not been used.
The USPTO wrote in the proposal: “In order to have a well-functioning trademark system, the register should accurately reflect trademarks that are currently in use… When the register includes marks that are not currently in use, it is more difficult for legitimate businesses to clear and register their own marks.
“It has become apparent in recent years that registrations are being obtained and maintained for marks that are not properly in use in commerce… Moreover, this ‘cluttering’ has real-world consequences when the availability of marks is depleted.”
It is also looking to amend the current six-month response period for office actions issued during examination of a trademark application. The USPTO proposes shortening the period to three months but is considering multiple alternative systems with response times as short as two months and extension fees of as much as $150.
The office has also proposed new grounds for cancellation for marks that have not been used in the US within three years of being registered, allowing petitioners a lower bar for cancellations in inter partes proceedings.
Alongside these changes, the USPTO is also seeking to amend rules on recognition of attorneys and counsel substitution, suspension for co-pending proceedings and expand upon letters of protest procedures.
The public has until July 19 2021 to comment on the notice. The full list of proposed changes can be found here.
The USPTO will also be holding two virtual roundtables on June 14 to field questions and hear public opinion on the proposed rulemaking.
ITC efficiency changes
Alongside the USPTO announcement, the US Intellectual Trade Commission (USITC) has established a new pilot programme to allow administrative law judges (ALJs) to issue initial determinations on “fewer than all issues” during an investigation.
This is the latest in several actions the commission is taking to increase efficiency in its section 337 investigation procedures—which involves investigating allegations of unfair practices in import trade.
Under the new programme, the ITC will allow the ALJ to receive an early briefing and hold early evidentiary hearings on “one or more discrete issues” as well as issue initial determinations on infringement, patent invalidity, patent eligibility, standing, or satisfaction.
“It is expected that interim initial determinations will be case-dispositive, or will resolve significant issues in advance of the main evidentiary hearing, and could facilitate settlement or otherwise resolve the entire dispute between the parties,” said the USITC.
As such, the ALJ may exercise discretion to suspend the procedural schedule, including discovery, as to remaining issues during the commission’s review period.
The pilot programme will apply to all investigations made after May 12, 2021.
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USPTO, USITC, Trademarks, Patents