Trademark Changes Being Implemented in December 2021 & 2022

The most impactful provisions of the Trademark Modernization Act (TMA) went into effect on December 18, 2021, providing new tools to eliminate registrations if the trademark is not in use or was not in use at certain relevant dates. Two new ex parte procedures were enacted, expungement and reexamination. A very detailed explanation of these two procedures can be found in my blog entitled, The USPTO Is Implementing The Trademark Modernization Act. This page will provide a summary of the new procedures and an overview of other changes at the Trademark Office.

An Expungement procedure can be initiated by any party for some or all the goods and/or services in a registration because the registrant never used the trademark in commerce. The expungement must be requested between 3-10 years after the registration date. However, until December 27, 2023, the USPTO will allow a request for expungement for any registration 3 years after the registration date regardless of the ten-year limitation.

Like Expungement, Reexamination may be initiated by any party for some or all the goods and/or services based on the mark not in use in commerce on or before a particular date. If the application is use-based, then use must occur by the filing date of the application or if it is an intent to use application, the relevant date is the later of either the date alleging use or the date that the deadline for filing a Statement of Use expired. Reexamination must be requested within the first five years after registration. Both procedures can be filed through TEAS and require filing fees of $400 per class.

Starting January 8, 2022, The USPTO will introduce identity verification for account holders using the Trademark Electronic Application System (TEAS). Identity verification is aimed at preventing abuse of the Trademark System and deterring bad actors who conduct fraudulent filings. The company providing the technology for this one-time verification process is ID.me. This will be a voluntary process for several months but will become mandatory on April 9, 2022. If you do not complete the verification process by April 9, 2022, you will not be able to file forms electronically using TEAS or TEASi.

The USPTO has adopted the verification process to bolster the security of the trademark filing process and to protect the integrity of the Trademark Register. Moreover, the Trademark Office is seeking to hold the account owner accountable for any misconduct or fraud. To complete the identification verification you will need to identify yourself as either a U.S. licensed attorney, Canadian attorney or agent, an unrepresented trademark owner, or an attorney can verify on behalf of support staff personnel. The USPTO is estimating that the identification verification will take approximately 15 minutes to complete. If you have difficulty completing the process independently, you will be able to schedule a live video conference with a trusted referee.

To complete the identification verification, you will need to create an account with ID.me and, you will need a smart phone, tablet or a computer that has a front facing camera and an internet connection. In addition, have on hand a government issued photo ID, your social security number which stays with ID.me and will not be provided to the USPTO, a selfie, and lastly you must provide permission to access your credit profile. ID.me will use the information provided to verify that you are who you say you are and to prevent your account from being duplicated by an impersonator. In the future if you need to make any changes to your USPTO.gov account, you will need to log back into your ID.me account so you should maintain the login information.

If you choose not to verify electronically, the USPTO offers an alternative paper verification process. The paper verification form must be notarized. The paper verification will also be available on January 8, 2022. It can take two or three weeks to process so plan accordingly.

The Trademark Office intends to transition to the electronic issuance of Trademark Registrations in 2022. The USPTO issued a public request for comments in connection with this issue, however it is anticipated that this change will take effect in the spring of 2022. What this means is that the paper registrations will be replaced with digital certificates. This will reduce the time frame for issuing certificates by 1-2 weeks. If a registrant still desires to obtain a paper version with a gold seal and the Director’s signature, this will be possible for a fee of $25.00. If you have questions about any of the new policies at the Trademark Office, please feel free to contact the firm.