The Trademark Modernization Act of 2020

Dana Brody Brown Mackrell International Member Firm for Northern California, Hoge Fenton Jones & Appel spoke at the Mackrell International webinar titled "Pandemic Aftermath: Shield your IP in this Digital Era”.

The United States has recently passed The Trademark Modernization Act of 2020 aiming to improve the integrity of the US trademark register.

With an enormous influx of trademark registration applications in recent years, the US Patent and Trademark Office (PTO) has indicated that many registrations evidence insufficient use.  The Trademark Modernization Act is designed to address this issue, as well as to address a US circuit court split regarding the standard for injunctive relief requests in trademark infringement cases.

The Act, first, allows for two new ex parte cancellation procedures.

Under current US law, any trademark cancellation must be done through the Trademark Trial and Appeal Board (TTAB). This is often an expensive and time-consuming process that resembles a sort of mini-litigation. 

The first of the new procedures is called an expungement.  In this case, a third party is alleging that the Registrant has never used the trademark in commerce in the US, either as a whole or with regard to certain of the goods or services claimed and must be brought between 3 and 10 years after the registration date. 

The second of these new procedures is known as re-examination.  This procedure is appropriate where a third party alleges that the mark was not actually in use as of the date alleged in the application or statement of use and must be brought within the first 5 years after registration. 

Both of these new procedures are designed to allow for substantially faster and less expensive cancellation of registrations with use problems.

In addition, the Act provides a new ground for cancellation proceedings before the TTAB.  This new ground is similar to expungement. However, it remains available to third parties outside of the expungement procedure timeframe and can be raised along with other issues supporting the cancellation argument.

The Act also provides USPTO examiners the discretion to flexibly set office action response deadlines shorter than the customary 6-months.  The final change to prosecution is the formalization of the process of filing letters of protest.  In practice informally for years, the Act now allows for letters protesting the approval of a trademark application to be filed within the examination period, for consideration by the PTO examiner.  Examiners will have two months to act on protest submissions.  This is, in short, an opportunity for third parties to object to applications without the need to either wait for the examination process to be completed or to endure a full-blown opposition proceeding.

Finally, the Trademark Modernization Act resolves a split in US Circuit Courts regarding the standard to be used when a plaintiff in litigation seeks an injunction against continuing use of a mark.  The Act establishes a uniform rule that, when trademark owners seek injunctive relief, they are entitled to a rebuttable presumption of irreparable harm.  This eases the burden of proof upon trademark owners, essentially shifting the burden to a defendant to rebut that presumption. 

In conclusion, all of these changes are designed to encourage third parties to help to police the US trademark register. They are also designed to help speed the process of review examination in the US and to make brand enforcement by trademark owners a less onerous and expensive process.

Please note two takeaways for brand owners with US trademark registrations:

  • there are new tools available to enforce your rights, and

  • be prepared to prove use of your marks in US commerce!

You can view the entire session here