By: Robin Gentry
You may have missed it if you were enjoying some much-needed time off between Christmas and the New Year, but on December 27, 2020, the Trademark Modernization Act of 2020 was signed into law as part of the coronavirus relief bill.
While the new law touches on a variety of different aspects of trademark law, there are two key provisions that were amended. These important new provisions include (1) powerful new tools to challenge trademark registrations at the United States Patent and Trademark Office (“USPTO”) when the trademark has not actually been used in commerce and (2) an important provision for trademark holders involved in litigation.
When an applicant applies for a trademark registration, the applicant is allowed to choose which goods and services are associated with the trademark. Further, the applicant must state whether these goods or services have been used in connection with the mark in interstate commerce or the applicant intends to use the mark in the future in connection with these goods and services. However, to qualify for a U.S. registration, the trademark must have been used in connection with those goods and services in interstate commerce. Unfortunately, some applicants list a number of goods and services that the applicant has never provided and has never used the trademark on. This creates a serious, and sometimes very costly, problem for other trademark users because it is possible that the same (or similar) trademarks can be used by different owners when the goods and services are very different, such as Delta airlines and Delta faucets.
First, the Trademark Modernization Act of 2020 now makes it easy for third parties to submit evidence in a letter of protest directly into the record of an application where such evidence provides a ground for refusal of the registration. Examples of such evidence include showing that the applicant does not use the trademark on a listed good or service.
Next, the Trademark Modernization Act of 2020 also provides an expedited process to remove any issued registrations if the trademark has not been used in interstate commerce in the United States for the listed goods and services. Anyone wishing to challenge a registered mark must submit a petition with evidence of a reasonable investigation regarding the challenged mark and specific goods or services that the petitioner alleges are not being used. The Director of the Trademark Office may then notify the registrant and open proceedings to expunge the registration upon a finding of a prima facie case. This new expedited process provides an alternative to a cancellation proceeding before the TTAB, but must be filed three years after a registration.
Lastly with regard to the TTAB, the Trademark Modernization Act of 2020 also provides new rules about the length of time for responses to Office Actions during the trademark application process. Now, an Examiner is allowed to set the time to respond to an Office Action from 60 days to 6 months. Traditionally, an applicant always had 6 months to respond. An applicant may request an extension for up to 6 months from the date of the Office Action so long as the applicant pays a fee for the extension.
Finally, on the trademark litigation side, the Trademark Modernization Act of 2020 provides that there is a rebuttable presumption of irreparable harm when a trademark is infringed. This is important because a showing of irreparable harm is necessary to obtain an injunction to prevent an infringer from using your mark. Courts have varied on whether harm could be presumed in the past, but this new Act clarifies that upon a finding of trademark infringement, irreparable harm can be presumed in a request for injunctive relief.
While this new Act has been signed into law, all of these changes are tentatively scheduled take effect by December 27, 2021.