On Dec. 27, 2020, President Trump signed the Trademark Modernization Act (TMA) as part of a bill containing billions in pandemic relief. The TMA includes the most significant changes to the Lanham Act in perhaps over thirty years, and these changes will take effect at the end of 2021. Many of these changes are intended to reduce the number of trademarks on the registry that are not used in commerce often referred to as “deadwood,” as they can be a burden to both the United States Patent and Trademark Office (USPTO) and also to other trademark applicants and the general public. The USPTO registry now includes approximately 2.4 million registrations, and it is important to make sure the registry accurately reflects claims of ownership in marks.
The TMA has created ex parte proceedings where third parties can challenge the validity of marks that are not used in commerce. First, the TMA provides that third parties can submit evidence relating to a trademark application to oppose the registration of the mark, and second, the TMA establishes expungement and ex parte reexamination proceedings to challenge the validity of marks that are not in use in commerce. Expungement or reexamination proceedings may also be initiated by the USPTO on the basis of non-use, and are unavailable to challengers after the fifth anniversary of the issuance of a registration.
The TMA also provides a new basis for cancellation of a registration in that a registered mark that has never been used in commerce with some of all of the goods or services at any time after the three-year period following the date of registration. Finally, the TMA allows the USPTO to set shorter time frames for responding to office actions. U.S. registrations that are based on foreign or international registration without the need to prove use prior to registration may be particularly vulnerable to cancellation, and trademark owners should carefully review their portfolio to avoid challenges under these new proceedings.
In litigation, the TMA restores the rebuttable presumption of irreparable harm to support injunctive relief upon a showing of trademark infringement, which harmonizes a split within the Circuit courts. In this respect, the TMA can be a valuable tool for brand owners looking to enjoin infringers.
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