Comments for the March 1, 2021 USPTO Trademark Modernization Act Roundtable

On March 1, 2021, I had the opportunity to speak at the United States Patent and Trademark Office's roundtable for the Trademark Modernization Act, and here is a general summary of my remarks:

Thank you to the USPTO for providing a forum to discuss the Trademark Modernization Act and share my thoughts on behalf of myself and my firm Gerben Perrott in Washington, DC.

I believe there has been no bigger threat to the integrity of the U.S. Trademark Registry than the influx of fraudulent applications we've seen over the past four years, and the problem continues to grow.

For context - when we talk about fraudulent applications, consider this: there over 150 applications filed by a single attorney containing the good "false beards" for 150 different applicants. Another application from the same attorney is for the baffling combination of "cages for household pets" "cruet sets for oil and vinegar," and "ski wax brushes."

I recommend that the proceedings be as fast and no more expensive as a default judgment before the USPTO to encourage the use of the expungement and reexamination programs.

Interested parties can file a Petition to Cancel a single-class application for $600, with $200 refunded where the claim was based on 'non-use' and receive a default in around 90-120 days, depending on how quickly the TTAB's staff processes the notices. If the expungement and reexamination procedures are more expensive or takes more time, then many of my clients will likely go the route of the TTAB, which will further strain an already strained system and not further the goal of the legislation.

For flexible deadlines, predictability is vital. Examining attorneys should not have the discretion to set shorter deadlines, and any changes should be standard for specific responses, not on a case-by-case basis.

Finally, my firm is thrilled that Congress codified Letters of Protest. This underused system gives trademark owners a chance to head-off expensive, time-consuming inter partes proceedings by providing the examining attorney with context and information in connection with a pending application. However, with the new mandate of 60 days, the Petitions Office will need additional staff and expedited training for those staff members to meet these new requirements under the TMA.

Thank you for your time and consideration.