At the end of 2020, most of the country was focused on Covid-relief legislation. But on December 27, 2020, the Trademark Modernization Act was signed into law. This law promises an overhaul of many aspects of trademark law. The changes will go into effect at the end of 2021, and will impact the trademark application process, existing registrations, and even litigation. This blog post will review some of the biggest changes, and what you should know about them.
Trademark Office Actions
When the U.S. Patent & Trademark Office reviews your trademark application and has problems with it, they will issue what is called an office action. In the past, you had 6 months to respond to that office action and to try and address the issues it raised. Under the Trademark Modernization Act, the Trademark Office can change that deadline, though. It will now have the authority to set the deadline between the normal 6-month period and 60 days. How this authority will be used remains to be seen.
Although the Trademark Office can set a much shorter deadline, Applicants will be able to request an extension to that deadline. The Director of the USPTO can decide how many extensions can be requested, as well as the length of those extensions and whether there will be an associated fee. Presumably, this will be used to try and speed up the reviews of applications. That will probably be a good thing for some applicants, but most certainly a pain for others.
New Methods of Cancellation Under the Trademark Modernization Act
A major problem with trademark law in its current state is just that there are so many registrations out there! For new businesses, finding a name that they like and that is available can be a major headache. One of the problems is that there are a ton of registrations for trademarks covering products and services that are not currently or were never used. These registrations are deadweight, but often prevent others from adopting and using a similar trademark. The Trademark Modernization Act provides new options for getting rid of some of these bad registrations (or parts of them).
The first new avenue is called “expungement,” which is a proceeding that seeks to cancel a registration or remove some of the products/services it covers. Essentially, it allows someone to petition the Trademark Office to remove unused products/services with evidence that the trademark was not being used.
The other option is called “reexamination,” in which a petition is filed to request that the Trademark Office re-review the history of a registration. The purpose of this is generally to look for fraudulent specimen filings. Fraudulent specimens, such as digitally-altered photos or screenshots, are often used to trick the Trademark Office into granting a registration. The practice is common enough that this new proceeding will likely lead to the cancellation of many registrations.
Of course, registration owners will have an opportunity to defend against these claims. And it will likely be necessary that they do so in order to avoid losing their registrations.
Trademark Infringement
The Trademark Modernization Act also has major effects beyond just what happens at the Trademark Office. It will play a role in federal trademark infringement lawsuits, as well. The Act is set to benefit trademark owners (plaintiffs) in these cases by creating a rebuttable presumption of irreparable harm. The plaintiff gets the benefit of this presumption upon a finding of infringement or a likelihood of success on the merits. This is important, because previously a plaintiff had to show both that they were likely to win their case and that they would suffer an irreparable harm in order to obtain injunctive relief (where a judge orders the defendant to stop doing something that may be hurting the plaintiff’s interests). This lightens the burden on plaintiffs and makes it easier to obtain an injunction.
Need Assistance with Your Trademark Filings?
When filing a trademark application, mistakes can open you up to potential cancellations, like through the new procedures mentioned above. Working with an expert can help you avoid having to worry about challenges to the registration that you receive at the end of the process. If you would like my assistance with obtaining a federal trademark registration, please feel free to call me at (480) 360-3499, email me at kevin@yourtrademarkattorney.com, or complete the contact form found on this page to schedule your free initial consultation today. I look forward to speaking with you.
