What Should I Know About the Trademark Modernization Act?

Intellectual property rights are a significant aspect of any business. With that in mind, it’s important to be aware of recent changes implemented by the U.S. Patent and Trademark Office (USPTO). On December 18, 2021, the Trademark Modernization Act of 2020 (TMA) took effect. Read on to learn about this federal law may impact your New York business. 

Transitioning from Paper to Electric

One of the things that the TMA does is to update procedures. In order to change and modernize the system, the USPTO moved from paper trademark applications and registration to the electronic form. This move was intended to give trademark owners an easier path to their trademark certificates when registered. The USPTO recognizes that most trademark owners favor receiving trademark registration certificates in a digital format rather than as a paper certificate, and made the switch, allowing owners to get registration certificates more quickly.

Removing Old Trademarks

Trademarks that are registered but not in use are considered “deadwood” registrations. When a mark registers, the registrant needs only to submit proof of use at six years, 10 years, and every 10 years after. Because of this, marks would stay on the Trademark Register for years even though they aren’t being used. This act as barriers to implementing new brands, preventing parties from registering similar marks for similar goods or services. 

Ex Parte Expungement and Reexamination

To deal with the problem of old marks crowding the Register, the TMA addresses it with a new set of ex parte processes, “expungement”, and “reexamination.” Reexamination allows petitions using a technical standard. Rather than an extensive unused basis, the petition allows for an expungement of all or a portion of the mark if it wasn’t used correctly by the application date or by the statement of use deadline. The petitions apply to trademarks in place after five years of their inception.    

They can be filed with the USPTO either by third-party petitioners or the USPTO can initiate an expungement on reexamination on its own.  

Letters of Protest Window Expanded

The TMA has also changed the way that the USPTO deals with the process for letters of protest. Before the TMA went into effect, the letter of protest process allowed a third party to get involved in a trademark request within 30 days of its publication. 

However, now the USPTO is required to include protest letters up to two months after publication, which means that there is a more comprehensive opportunity for the issue to be recognized. It also forces fliers to be more proactive when it comes to anticipating challenges; they should work to ensure that they perform proper due diligence, keep a through chain of custody on records and confirm usage on the first date of usage for the goods and services.   

Patent Review

Patent owners should also take note of the inter partes review, a relatively recent trial process. Here, a new challenge to a patent occurs when a party argues that authorization was already taken by prior patented art. 

This review is prompted when a third-party files up to nine months after a patent is granted/reissued or if a post grant review is authorized. Either way, you as an owner must respond. However, completing your due diligence and researching information can help to avoid this in the first place. 

Get Help from IP Lawyers in NY 

For many businesses, your trademark, copyright, or patent is one of your primary assets, so it’s well worth protecting. With the TMA’s introduction of new examination procedures and stronger presumptions for protection, you may likely benefit. If you need guidance, please reach out to a MOWK Law attorney who can assist you with your intellectual property issues. Contact us today to see how we can help you.

What Does a Failure to Function Mean in Trademark Law? 

Picking out a good name for your trademark is just one step on the way to establishing the trademark for your business. Registering your trademark with the United States Patent and Trademark Office (USPTO) is a worthwhile path to take because it allows you to protect your rights against trademark infringers. But not all trademarks will make it to registration. It may be rejected for many reasons, including the likelihood of confusion or mere descriptiveness. Another common form of registration refusal is the “failure to function.” Before you file for registration, read on to learn more.

What is the Purpose of Trademark Law?

The main purpose of trademark law is twofold: It is to help consumers know where the products and services they use comes from, and it rewards and protects companies who form goodwill and rights by being the first to use a trademark on a service or product. This prevents other businesses from trying to use a similar mark to sell similar products or services.

What is a Failure to Function?

A trademark is a word, symbol, design, slogan, or phrase that is used to identify and distinguish your business’ product or goods from others; it is a source identifier. A trademark can be rejected for registration based on its failure to function when the mark can’t be used as a source identifier in the public’s mind.

Because a trademark must be distinctive, a mark that’s only informational or that’s a widely used phrase, doesn’t connect with a particular business, product, or service. Therefore, it fails to function as a source identifier and can’t be protected under trademark law.

When Will a Trademark be Rejected for Failure to Function?

Typically, the USPTO will reject a trademark for failure to function when the mark fits into one of these categories:

  • It is informational or descriptive
  • It is a message that’s commonly used
  • It is generally used to show religious, political, or social views
  • It shows support or is associated with a particular message

Examples of Trademarks that Were Rejected for Failure to Function

The more familiar the term or phrase is, the less likely it will be a mark that could be used to identify a single source of goods or services.  Here are examples of marks that failed to function as source identifiers:

  • All natural gourmet crabmeat pasteurized
  • Born in the USA
  • God bless the USA
  • I love you
  • Intelligence of things
  • Inventory is evil
  • Legal landmines
  • Mama bear
  • Remember this name
  • Ribbons of hope
  • She knew she could
  • Team Jesus
  • The next move is yours
  • Worst movie ever

Get Help with Trademark Registration

Although you don’t necessarily need to have your trademark registered. But if you do, you want to be sure that it’s not going to be rejected based on a failure to function. Add value to your business by getting your trademark registered and get help with a skillful attorney familiar with intellectual property issues. Contact us here at MOWK Law where our lawyers are available to fill your IP needs.