TMA Provides New Shortened Response Times (plus, a word about audits)

December 7, 2021

By Ann Dunn Wessberg

The Trademark Modernization Act (the TMA or the Act), enacted in December 2020, provides for shorter response times to respond to examination issues raised by a Trademark Office Examining Attorney. On November 17, 2021, the Trademark Office issued the final rules implementing the Act. Unlike other changes made by the TMA, the implementation of this feature will be delayed until December 1, 2022.

Currently, when the Trademark Office refuses to register an applied-for trademark, the Examining Attorney provides six months in which to respond. The TMA rules permit the Examining Attorney to provide a three month period in which to respond. Applicants may, however, apply for an extension of three months to respond upon paying a fee of $125 if the response is submitted electronically or $225 if submitted via a paper response. Applications filed under the Madrid Protocol, however, will still be provided six months to respond due to data the Trademark Office collected, noting that such responses are generally received closer to the six-month end of the period.

Of more immediate concern, the Trademark Office has taken several actions in the TMA and before the TMA to try to get goods and services not in use off of the register. Even prior to the TMA, the Trademark Office has conducted audits to ask registrants if they are still using the registered mark on all of the goods and services claimed in the registration. Registrations are likely to be audited if the registration contains at least one class with four or more goods or services or at least two classes with two or more goods or services. Accordingly, it is more important than ever that at the time of filing maintenance documents declaring use and renewals, one should verify that the mark is actually used in commerce for every good or service listed in the registration. If, after filing the maintenance or renewal documents, the Trademark Office audits the registration and goods or services need to be deleted, a $250 fee per class in which goods or services are deleted will be applied with an additional $100 deficiency surcharge possible, depending on when the response is filed. In contrast, there are no fees to amend the record voluntarily when maintenance documents are filed between the fifth and sixth anniversary of the registration or when the renewals are filed. To avoid these fees altogether, review the goods and services in registrations when these maintenance and renewal windows open and voluntarily file amendments to the goods and services.