The Trademark Modernization Act (TMA) introduced meaningful changes to how trademarks are registered, challenged, and enforced in the United States. These updates were designed to address a growing concern at the United States Patent and Trademark Office (USPTO): trademark registrations that are not actually being used in commerce, yet continue to block legitimate businesses.
For brand owners, the TMA creates both new opportunities and new responsibilities. At Jafari Law Group, we help clients understand how these changes affect trademark strategy, registration decisions, and enforcement options.
Why the Trademark Modernization Act Was Passed
Before the TMA, removing unused or improperly registered trademarks from the federal register was often slow and expensive. At the same time, businesses faced increasing difficulty registering marks because the register was crowded with registrations that were never used or were no longer active.
The TMA was enacted to improve the accuracy of the trademark register by:
- Making it easier to challenge registrations that are not in use
- Requiring greater accuracy in use claims
- Providing clearer enforcement tools for trademark owners
New Proceedings to Remove Unused Trademarks
One of the most significant changes under the TMA is the creation of ex parte expungement and ex parte reexamination proceedings. These tools allow certain trademark registrations to be challenged without full litigation.
Ex Parte Expungement
Expungement allows third parties to request cancellation of a trademark registration based on nonuse. This applies when a registrant never used the mark in commerce for some or all of the listed goods or services.
These proceedings are generally available for registrations between three and ten years old, though some flexibility exists depending on timing. If challenged, the trademark owner must submit evidence of proper use or risk losing some or all of the registration.
Ex Parte Reexamination
Reexamination focuses on whether the mark was in use in commerce as of the required date, such as the application filing date or the date of an amendment to allege use.
If the trademark owner cannot prove valid use at that point in time, the affected goods or services may be removed from the registration.
These procedures provide a faster and more cost-effective way to clear blocking registrations.
New Ability to Submit Evidence Against Pending Applications
The TMA also formalized a process allowing third parties to submit evidence during examination of a pending trademark application. This gives brand owners a way to raise concerns earlier, before a confusingly similar mark registers.
This evidence may relate to issues such as:
- Likelihood of confusion
- Nonuse
- Genericness or descriptiveness
This process can reduce the need for oppositions before the Trademark Trial and Appeal Board and may prevent problematic registrations from issuing in the first place.
Increased Scrutiny of Use Claims
The TMA strengthened the USPTO’s authority to question use claims. Trademark owners should expect:
- Closer review of specimens
- Requests for additional proof of use
- Greater risk when applications list goods or services not actually offered
Registrations that overstate use are now more vulnerable to challenge.
Changes That Affect Trademark Enforcement
The TMA restored a rebuttable presumption of irreparable harm for trademark owners seeking injunctive relief after showing infringement or a likelihood of success on the merits. This change makes it easier for brand owners to seek court orders stopping ongoing misuse.
While this presumption can be challenged by the defendant, it strengthens the position of trademark owners enforcing their rights under the Lanham Act.
What the TMA Means for Trademark Applicants
Applicants must now be more careful than ever when filing trademark applications. Key considerations include:
- Filing only for goods and services actually in use or legitimately intended for use
- Submitting accurate specimens
- Avoiding overly broad descriptions
Errors that once went unnoticed may now expose a registration to partial or complete cancellation.
What the TMA Means for Existing Registrations
Trademark owners should review their existing portfolios and:
- Confirm that all listed goods and services are still in use
- Remove items that are no longer offered
- Maintain clear records showing continued use
Taking these steps proactively can reduce the risk of expungement or reexamination challenges.
Strategic Opportunities for Businesses
For businesses blocked by unused trademarks, the TMA provides new ways to:
- Challenge registrations that should not remain on the register
- Clear the path for new trademark filings
- Reduce enforcement pressure from inactive registrants
These tools can be especially useful in crowded industries.
When to Speak With a Trademark Attorney
The Trademark Modernization Act changed how trademark registration and enforcement works in practice. Whether you are filing a new application, maintaining an existing registration, or dealing with a blocking mark, legal guidance can help you avoid unnecessary risk and expense.
At Jafari Law Group, we advise clients on TMA compliance, portfolio review, enforcement strategy, and removal of unused trademarks. We offer a free consultation to discuss how these changes affect your trademarks.
Contact Jafari Law Group today to speak with an attorney about trademark registration and enforcement under the Trademark Modernization Act.