The Trademark Modernization Act of 2020 (“TMA”) — signed into law by President Trump on December 27, 2020 as part of the COVID-19 relief and government funding package — provides trademark owners with several significant benefits.
The legislation makes it easier for a trademark owner to obtain injunctive relief against an infringer. Courts have required that, to obtain an injunction against an infringer, the trademark owner must prove that it will be “irreparably harmed” if the infringer is not enjoined from further use of the infringing mark. The TMA provides that a trademark owner who proves infringement will enjoy a legal presumption that the harm caused by continued infringement will be irreparable, thereby increasing the owner’s likelihood of obtaining injunctive relief.
Due to rising concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA also calls for the United States Patent and Trademark Office (“USPTO”) to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be spurious. Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings. The TMA calls for a broadening of the scope of evidence that a third-party may submit for consideration during examination of a pending application (including evidence of non-use), and a streamlined procedure for challenging issued registrations. These changes will help clear the way for legitimate trademark users to obtain registration of their marks.
Along the same lines, the TMA requires the Government Accountability Office to conduct a study regarding the problem of false and inaccurate claims of use in trademark applications and registrations, and to report to Congress recommendations based on the results of the study as to any changes to trademark law that will improve the accuracy of the Trademark Register or reduce inaccurate or false claims of use.
In addition to the changes effected by the TMA, the USPTO will implement new and increased fees as of January 2, 2021, including the fee for filing a trademark application, for filing an appeal from a final refusal by the USPTO, and the fees for filing a notice of opposition or petition for cancellation. Fees for filing an appeal brief and for requesting oral argument in an opposition or cancellation proceeding are newly added. In keeping with the focus on clearing the Trademark Register of so-called “deadwood,” the USPTO will charge a fee to a registrant who seeks to maintain or renew a registration and then requests that goods or services be removed from the registration due to non-use.