AIPLA Submits Comments on Notice of Proposed Rulemaking Regarding Changes to Implement Provisions of the Trademark Modernization Act of 2020

Written July 19, 2021

On July 19, 2021, AIPLA submitted comments to the United States Patent and Trademark Office (USPTO) regarding the Notice of Proposed Rulemaking (NPRM) Regarding Changes to Implement Provisions of the Trademark Modernization Act (TMA) of 2020. The comments addressed seven aspects of the NPRM: (1) ex parte expungement and reexamination proceedings; (2) the petition filing fee; (3) the identification of the real party in interest in a petition; (4) flexible response periods; (5) letters of protest; (6) attorney recognition; and (7) the proposed burden hours for private sector respondents.

AIPLA supported clarifying Proposed Rule 2.91(c) and Proposed Rule 2.91(d)(3), recommended that the USPTO consider adopting a separate rule specifically dealing with submissions in support of ex parte petitions for expungement and reexamination, and expressed concern with the USPTO’s reliance on 37 C.F.R. § 11.303(d), requesting clarification on whether this duty of candor continues after submission of a petition. AIPLA also wrote that the USPTO should include in the final rules a requirement for the Director to issue a decision within a certain amount of time and specify the consequences of an unmet deadline. AIPLA supported allowing the registrant an opportunity to cure defects in its response to a petition and raised some concerns regarding response time, recommending that the Office permit reasonable extensions of time for good cause shown.

AIPLA encouraged the USPTO to address the intended relationship between requests for reconsideration and appeals and to clarify whether a registrant will receive an opportunity to appeal after a denial. The comments also recommended addressing the applicable standards of review following a determination in an ex parte proceeding that the registrant has not rebutted a prima facie case of nonuse.

Regarding the filing fee, AIPLA recommended a reduction to $400 or lower. Alternatively, the Office should extend a refund of $200 per class filed in cases where the respondent does not reply to the petition. AIPLA offered additional modifications if the USPTO decides to implement flexible response periods and did not support applying flexible response periods to post-registration Office Actions.

AIPLA opposed the USPTO’s plan to remove the name of any attorney whose recognition was deemed to have ended from the current attorney-of-record field in their database and recommended that attorneys affirmatively remove themselves from the record if they so choose. AIPLA also did not support the imposition of a new 30-day requirement for attorneys to withdraw in cases in which the practitioner is discharged and wrote that the onus should be on the owner to provide the attorney update.

AIPLA submitted that the estimated burden hours are underestimated, recommending that the Office should provide more realistic estimates that take into account the time to collect and assemble and verify evidence, and draft the petition or response.

To read the full comments, please download the file.