My last blog post discussed one of the changes to U.S. trademark law that were contained within the recently enacted Consolidated Appropriations Act, 2021 (CAA). This post will discuss two changes that were made that relate to trademark prosecution (i.e., the process through which a party obtains a trademark registration). 

The first change provides third parties with the ability to submit information during the ex parte phase of trademark prosecution that could be used by the examining attorney to reject the trademark application. Prior to the passage of the CAA, a third party could present a formal protest during the prosecution of another party’s trademark application. The protest could include evidence, but the evidence would not necessarily become part of the record. As a result, most protests were unsuccessful, so that third parties would usually have to spend significantly more money to oppose the trademark application in an opposition proceeding or to cancel the trademark application in a cancellation proceeding.

The CAA should make it easier for third parties to submit evidence during the prosecution of a trademark without the need to prepare a formal protest. The Director of the U.S. Patent and Trademark Office will have the ability to determine whether the evidence should be entered into the record.

The Director’s decision will not be reviewable. However, a third party could still initiate an opposition proceeding or another type of proceeding using the evidence.

The second change provides an examining attorney with the ability to shorten the period of time in which a trademark applicant can respond to a rejection. Typically, trademark applicants have six months to respond to a rejection.

The CAA will give trademark attorneys the ability to set a period response of between 60 days and six months. If the period is less than six months, applicants will have the ability to pay for extension, so that the period can be extended up to the traditional six-month period.