The Trademark Modernization Act (TMA)

The Trademark Modernization Act (TMA), signed into law on December 27, 2020, and effective December 18, 2021, introduced significant changes to federal trademark practice. The Act created new tools for clearing unused trademarks from the federal register and gave the USPTO authority to shorten response periods for office actions. These changes directly impact trademark owners, applicants, and the overall health of the trademark registration system.

Why the TMA Was Enacted

The federal trademark register had become increasingly cluttered with registrations for marks that were not actually in use on all of the goods and services listed. This "deadwood" created real problems: legitimate applicants were being refused registration based on existing marks that their owners were not using, clearance searches were turning up potential conflicts that did not actually exist in the marketplace, and the reliability of the register as a source of information about existing marks was eroding. The TMA addressed these problems by creating streamlined procedures for challenging registrations where the mark has never been used or is no longer in use.

Expungement Proceedings

An expungement proceeding allows any person to petition the USPTO to cancel a registration (in whole or in part) on the grounds that the mark has never been used in commerce on some or all of the goods or services listed. This is a powerful new tool because it targets registrations obtained through intent-to-use applications where the mark was registered but never actually used on certain goods or services. The petitioner must submit a verified petition with evidence showing that the mark has never been used on the challenged goods or services. If the petition establishes a prima facie case, the USPTO institutes the proceeding and the registrant must provide evidence of use. For a detailed explanation, see our expungement and reexamination guide.

Reexamination Proceedings

A reexamination proceeding allows any person to petition the USPTO to cancel a registration on the grounds that the mark was not in use in commerce on the relevant date — either the date of the application (for use-based applications) or the date the Statement of Use or Amendment to Allege Use was filed (for intent-to-use applications). Unlike expungement, which focuses on marks that have never been used, reexamination targets marks that were not in use at the specific point in time required by the statute. This addresses situations where an applicant may have filed specimens or claimed use prematurely.

Shortened Response Periods

The TMA also authorized the USPTO to set flexible response periods for office actions, ranging from 60 days to 6 months. Previously, all applicants had a uniform 6-month response period. Under the new authority, the USPTO now sets a standard 3-month response deadline for most office actions, with the option for applicants to purchase a 3-month extension for an additional fee. This change was designed to move applications through the system more quickly and reduce the overall pendency of applications.

Letters of Protest

The TMA codified the practice of letters of protest, which allow third parties to submit evidence to the USPTO for consideration during examination of a pending application. A letter of protest is not a formal opposition — it is simply a mechanism for bringing relevant evidence (such as prior registrations, use evidence, or genericness evidence) to the examining attorney's attention. The examining attorney has discretion to consider or disregard the submitted evidence. Letters of protest must be filed before the application is approved for publication.

Rebuttable Presumption of Irreparable Harm

In a significant change for trademark litigation, the TMA restored the presumption that a trademark owner suffers irreparable harm when infringement is established. This presumption, which had been eliminated by the Supreme Court's 2006 decision in eBay v. MercExchange for patent cases and subsequently applied by some courts to trademark cases, makes it significantly easier for trademark owners to obtain injunctive relief (court orders stopping the infringing activity). The restoration of this presumption strengthens enforcement capabilities for all trademark owners.