Trademark Modernization Act: A Year of ‘Brand Housekeeping’ AheadTrademark Modernization Act: A Year of ‘Brand Housekeeping’ Ahead

The US Patent and Trademark Office (USPTO) recently implemented the Trademark Modernization Act (TMA), which will have a significant impact on federal trademark law. World Intellectual Property Review contacted Finnegan of counsel and former Trademark Trial and Appeal Board (TTAB) attorney Katie McKnight to discuss some of the potential changes as a result of the TMA.

Katie stated: "Through its attempts to clear the register, police its own marks, and sanction bad-faith filers, the USPTO may help brand owners to one day clear marks with more confidence, while also finding a way to more efficiently manage its backlog of applications."

She also explained that companies may start to turn to the private IP space as enforcement strategy and portfolio management strategy adjust to the changes brought on by the TMA. She stated, "Because there is no standing requirement for these new ex parte proceedings, brand owners may enlist private law firms to file petitions for expungement and/or reexamination on their behalf to preserve their anonymity."

Katie added, "From a defensive perspective, 2022 may be a year of housekeeping. Brand owners would be well-advised to review their portfolios to determine whether their identifications of goods and/or services accurately reflect the actual use of their marks in commerce, especially if they own registrations with expansive identifications."

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