On Sunday, December 27, 2020, President Trump signed into law the $2.3 trillion coronavirus relief and government funding bill. Included within the massive piece of legislation are a number of new laws specifically addressing intellectual property issues, including the 2020 Trademark Modernization Act (TMA), the Case Act and other copyright related legislation discussed in another article in this edition. Here, we are going to discuss the TMA.
The TMA strives to make improvements in various areas of trademark law. Joseph Matal (paywall), a former Commissioner of the patent and trademark office (PTO), says it is a “game changer.” Whether that is hyperbole remains to be seen. Nonetheless, the TMA introduces some noncontroversial but effective measures for cleaning out so-called “Deadwood” from the PTO database and streamlining the efficiency of trademark prosecution. For example, in recent years, there has been a deluge of Chinese trademark filings in the United States. Many of these filings are based upon false assertions of use and may be accompanied by digitally altered supporting specimens. Because, under US law, registered trademarks must be in use, the presence of registered but unused trademarks in the PTO database creates a barrier to registering new trademarks and is particularly harmful to new businesses who wish to establish their names in the marketplace.
The PTO instituted a new requirement in 2019 that directed foreign applicants to use a US attorney for trademark filings. This was an attempt to reduce the rate of fraudulent trademark applications. The TMA adds two new procedures to accomplish a similar goal. Third parties may now request ex parte cancellation of unused trademarks (like those filed by Chinese applicants) by petitioning for expungement of the trademark from the PTO database. Similarly, any person may file a petition for re-examination of a trademark that is not in use. (An “ex parte” procedure is one in which the trademark owner need not be present or enter an appearance.) Before this new rule, an applicant would have to wait, perhaps years, until the unused trademark was deemed abandoned by the PTO’s slow-moving internal procedures.
The TMA also introduces some new litigation-related rules. In trademark litigation, it is often very difficult to prove damages, and often, all the plaintiff desires is for the defendant to stop using the infringing trademark. Such relief is referred to as “injunctive relief.” To obtain injunctive relief, the plaintiff is required to prove that the defendant’s conduct has created irreparable harm. The TMA now creates a rebuttable presumption of irreparable harm in trademark infringement lawsuits, which will make the process of obtaining injunctive relief easier.
These changes, although few in number, should contribute to a more streamlined and efficient trademark registration system.
— Adam G. Garson, Esq.