The Trademark Modernization Act (“TMA”) is on its way – and suspiciously long lists of goods claimed to be sold by a company may become a thing of the past. The TMA, set to be fully implemented by the end of 2021, is designed to improve the accuracy of the U.S Patent and Trademark Office’s (“USPTO”) register, which is notoriously cluttered with less-than-credible lists of goods and services included in applications. Until now, there wasn’t much of an audit process, so new applicants were out of luck if faced with a refusal based on prior-filers of applications including now-defunct (or never quite accurate) lists of goods.
Though this comes up frequently with overseas applicants flinging cheap goods on Amazon who may not understand (or respect) the *actual* use in commerce requirement, it’s not uncommon for a well-meaning small business to inadvertently goof here. Take for example, a bakery with a registration filed in 2017, as they approach the first renewal window (between the fifth and sixth year after registration). They originally filed for “bakery, coffee, and matcha shop services” in Class 43 as well as “cookies, cakes, cupcakes, and croissant-donuts” in class 30. Though the bakery is going strong today, they phased out croissant-donuts and matcha in 2019. Prior to the TMA, those “stale” goods might linger on the USPTO register, locking out new owners.
Key functions of the TMA:
– Strengthens the procedures for objecting to third party filings prior to the need for a formal (more costly) Appeal Board opposition procedure.
– Provides a new right to cancel or reexamine third party registrations when it’s clear they were never actually used (or if the applicant originally submitted inaccurate use dates).
-Imposes a penalty ($250 per class) for after-the-fact requests by owners to delete stale goods or services from their registration (i.e., after starting the renewal process or after an audit is initiated).
While in the past, the bakery could easily maintain exclusive brand rights to those once-trendy snacks (because renewal never requires proof of every single item – just limited examples from each class), the new standards and audit rules mean that owner would be well advised to voluntarily strike the words from the renewal before a suspicious examiner (or nosy competitor) raises the issue. Otherwise, the owner would be required to pay the fee for each class ($500 total) in order fix this mistake and maintain valuable protection for its other rights in both classes.
It pays to be proactive when renewal time is approaching to avoid these needless fees. Owners approaching any renewal deadline should conduct their own audit of goods and services listed at the time of filing to ensure that they are still actively in that line of business. Up until we hit “submit” on a renewal application, doing so is as simple as striking words from the list. However, if the owner has a change of heart after we file, or if the USPTO exercises its expanded right to conduct an audit of each and every listed cookie variety, not only will the rights be at risk, but a new $250 fee (per class) will be incurred in order to make the necessary deletions.
While in some cases, it’s possible to revive an item that has been temporarily “off-menu,” the safe approach is to affirmatively delete anything unless you can easily prove that it is actively part of your offerings. Rather than waiting until your renewal is due, contact TMF with questions about active goods and services.
And if you receive a renewal solicitation that looks like a scam, it probably is; but we are happy to put you at ease if you reach out.