On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) was signed by the President as part of the year-end Consolidated Appropriations Act for 2021. The TMA, effective one year after signing, is designed to modernize trademark examination procedures and combat the increasing numbers of trademark registrations covering marks not used in commerce.  The TMA is a positive step towards removing some of the more frustrating barriers small businesses face when registering legitimate marks. Here is a brief history behind TMA. 

False registrations at the heart of the problem

There has been a significant increase in trademark registrations that falsely claim the use of a mark. When unused marks remain on the trademark register, those registrations hurt new market entrants—like small businesses—making it harder for them to obtain protection for strong, commercially viable marks. This market-entry problem is exacerbated by a flood of fraudulent registrations that rely on doctored photos to obtain a trademark registration.

How TMA addresses the fraud

The TMA addresses the false-use-claim problem by creating new procedures to improve examination effectiveness and efficiency. It also allows third parties to request ex parte cancellation of trademark registrations for marks that have not been used. The hope is that these measures will ease the burden on new market entrants created by registrations that should not have been registered in the first place.

Make sure your application succeeds

Recently, USPTO examiner Liz Jackson shared the seven most common mistakes she sees with trademark applications:

1. The mark is informative but not functional. This firmness of purpose must be there.
2. Full website details are missing. Any website submitted as a specimen must come with both the full website address and an access date.
3. The specimen shows no connection to the goods or services. You need to do more than just provide just a picture of the trademark. The specimen has to show the mark used on or in connection with the goods or services.
4. The applicant has failed to provide a U.S. domicile address. If you provide a PO box, that’s not a domicile.
5. The specimen has been digitally altered. There is no intent to use the mark for the full range of goods and services.
6. Applicants refuse to answer the phone or respond to an email. A peculiar but real reason. If an examiner is contacting you, respond! Sure, there’s the possibility of spam, but you can verify the caller by making a note of the examining attorney for the application

If you’ve been unsuccessful in your trademark applications in the past, that doesn’t mean you will never succeed. If 2021 is the year you plan to submit your trademark application, let’s make sure it has a good chance of getting over preliminary hurdles. My role as a trademark and patent attorney is to provide the legal perspective for your business. I can conduct searches and advise on what I find, and also file on your behalf. I can enhance and elevate any work that you’ve done, which will help you refine and succeed with your business plan.

Additional source: “Why your mark could be doomed to fail: USPTO examiner reveals growing reasons for refusals”