INTA Focuses on Key Legislation Before Congress - International Trademark Association

INTA continues advocacy in Washington, D.C., focused on key legislation that is pending in this session of Congress, including the Trademark Modernization Act of 2020. With upcoming elections in November for the entire House of Representatives and a portion of the U.S. Senate, Members of Congress are working to pass legislation before this session of Congress concludes while also concentrating on the U.S. government’s response to the current global pandemic.

INTA Is Developing the Association’s Position on the Trademark Modernization Act

The Trademark Modernization Act of 2020 was introduced in both the U.S. House of Representatives and the U.S. Senate on March 11. The bill provides a rebuttable presumption of irreparable harm in Lanham Act cases, consistent with INTA’s May 2017 Board Resolution and prior INTA testimony before the U.S. House Subcommittee on Courts, Intellectual Property, and the Internet. The pending legislation amends the Lanham Act and was drafted to protect the integrity of the U.S. trademark register by making it easier to remove registrations where the marks are not in use or where marks were registered based on fraudulent specimens of use.

INTA leadership is currently reviewing the legislation to determine the Association’s position.

USPTO Receives Extensions on Some Deadlines for Customers Under the Coronavirus Aid, Relief, and Economic Security (CARES) Act

The U.S. Congress supported brand owners and the U.S. intellectual property system by giving the U.S. Patent and Trademark Office (USPTO) authority to extend certain deadlines for customers due to the global pandemic under the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which was signed into law on March 27, 2020. The USPTO outlined the key changes affecting trademark filers and published a frequently asked questions document.

In summary, the CARES Act provides a 30-day extension of time for certain trademark-related and U.S. Trademark Trial and Appeal Board‒related deadlines if the filing includes a statement that the delay in filing or payment was due to the COVID-19 pandemic. Specific details outlining the electronic process and procedures for these changes are available on the USPTO website. The USPTO welcomes inquiries from customers regarding these extensions for filings via email: [email protected]. Further, questions about filings before the TTAB can be sent via email: [email protected].

INTA supports these provisions in the CARES Act and continues to monitor additional legislation and support for brand owners as the pandemic continues to affect our global world.

SHOP SAFE ACT Introduced in Congress

In March, a bill was introduced in the U.S. House of Representatives entitled “Stopping Harmful Offers on Platforms by Screening Against Fakes in E-Commerce Act of 2020” (SHOP SAFE). The bill would amend the U.S. Trademark Act to include provisions setting out contributory liability for “electronic commerce platforms” if they do not meet certain requirements to stop the sale by third parties of counterfeits that “implicate health and safety” of consumers. Relevant INTA subcommittees are reviewing the bill and will work with INTA’s Board of Directors to formulate a position in coming weeks.

INTA’s Washington, D.C., Representative Office represents the Association’s 2,361 members in North America. Working in collaboration with staff at INTA’s headquarters in New York City, the Washington, D.C., Representative Office leads the Association’s policy, membership, marketing, and communications initiatives in Canada and the United States. To learn more about INTA’s activities in the region, please contact INTA Director of Government Relations Jennifer McDowell at [email protected].

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.