U.S. Trademark Modernization Act Signed into Law

Published: January 6, 2021

Anne Gilson

Anne Gilson LaLonde Gilson on Trademarks South Burlington, Vermont, USA Global Advisory Council—North America; Legislation & Regulation Committee—United States Subcommittee

Rod Enns

Verifier: Rod Enns Enns & Archer LLP Winston Salem, North Carolina, USA Legislation and Regulation Committee—United States Subcommittee

The U.S. Trademark Modernization Act (TMA) became law on December 27, 2020, as part of an omnibus legislative package. INTA had weighed in on this consequential law, which restores a key litigation protection, accelerates examination, and adds procedures to challenge current registrations.

INTA began working with congressional staff on this legislation well over a year ago, long before it was introduced in Congress in March 2020. The Association’s U.S. Subcommittee of the Legislation and Regulation Committee, with the assistance of the U.S. Patent and Trademark Office (USPTO) Subcommittee of the Trademark Office Practices Committee (TOPC), submitted written comments and participated in roundtables and other conversations in order to improve the bill to better protect brand owners and professionals.

The U.S. Legislation and Regulation Subcommittee was concerned that certain new procedures in the bill were unnecessary and could be used as a tool for the harassment of legitimate brand owners. The INTA Board of Directors adopted a 2020 resolution stating that current measures to maintain the integrity of the U.S. Trademark Register were sufficient or could be strengthened as an alternative to the establishment of ex parte and ex officio expungement and reexamination procedures. While these concerns remain with the passage of the bill, INTA’s productive discussions with Capitol Hill staff over the past year directly improved the end product.

Many key details of the legislation have been left to the rulemaking process. The USPTO Subcommittee of the TOPC will take the lead on presenting INTA’s comments on future proposed rules.

Below are some key components of the new law:

  • Irreparable harm presumption: The presumption of irreparable harm in trademark cases will become law (again). U.S. courts had, for decades, presumed that, in trademark infringement cases, a showing of likely confusion meant that the plaintiff would suffer irreparable injury without injunctive relief. Following the U.S. Supreme Court’s 2006 opinion in a patent case, however, courts backed away from the presumption. The TMA provision reinstating the presumption was a policy priority for INTA, and the subject of a Board resolution in 2017.
  • Expungement and reexamination: Two new ex parte procedures will be available at the USPTO a year from now: expungement and reexamination. These provisions are intended to declutter the U.S. Trademark Register by making it easier to remove registrations where the marks are not in use or were registered based on fraudulent specimens of use.
    • An expungement proceeding will challenge a registration on the ground that the mark has never been used in commerce with some or all the goods or services listed in the identification. For expungement proceedings based on foreign registrations, the registrant may show that nonuse is due to special circumstances and is excusable.
    • A reexamination proceeding will challenge the registration on the ground that the mark was not in use in commerce with some or all the goods or services listed in the identification on or before the filing date of the application or the amendment to allege use. In other words, the petition claims that the initial specimen of use did not in fact show use. Reexamination does not apply to foreign registrations.

A third-party petition must include supporting evidence and a verified statement setting out the filer’s “reasonable investigation.” After receiving a petition, the USPTO Director will determine whether it sets forth a prima facie case. If so, it will initiate the procedure and the registrant may respond with its own evidence. The Director can also institute either of these proceedings sua sponte, without a third-party petition. Adverse decisions on expungement or reexamination may be appealed to the U.S. Trademark Trial and Appeal Board (TTAB) and then to the Federal Circuit.

  • Flexible response periods: Currently, all responses to Office Actions refusing registration have a six-month deadline. Under the TMA, the USPTO will be able to promulgate regulations that could require a shorter time to reply or amend the application. Time periods may vary depending on the ground for the refusal and could be between 60 days and six months. This provision is meant to speed up the examination process.
  • Letters of Protest: Effective in one year, the law formalizes Letters of Protest to the USPTO. This procedure allows third parties to submit evidence to be considered when an application is examined. The utility of this statutory provision is unclear, given that the USPTO just codified the Letter of Protest procedure in its regulations, effective January 2, 2021.
  • Director’s authority over the TTAB: The Federal Circuit recently found that the Patent Trial and Appeal Board judges were “principal officers” who should have undergone Senate confirmation. In order to avoid such a challenge to the TTAB, the TMA formalizes the Director’s authority to oversee TTAB decisions.

The Letter of Protest and expungement and reexamination provisions will become effective on December 27, 2021. The remaining provisions were effective on enactment, though the USPTO must promulgate regulations to change the response deadlines.

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

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