Jan
03

IMPORTANT TRADEMARK LAW UPDATE: The Trademark Modernization Act of 2020

The Trademark Modernization Act of 2020 (“TMA”) was signed into law by President Trump on Dec. 27, 2020 as part of the COVID-19 relief and government funding package.  This article summarizes the several significant benefits provided to trademark owners under the TMA.

  1. Presumption of Irreparable Harm to a Trademark Owner by an Infringer

The TMA makes it easier for a trademark owner to obtain injunctive relief against an infringer. Prior to the new law, trademark owners were required to prove that they will be “irreparably harmed” if the infringer is not enjoined from further use of the infringing mark.  Now, as long as the owner can demonstrate infringement, the owner 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.   Many times, an owner’s main goal is simply to stop the infringement through injunction rather than proceed with an expensive drawn-out trial.  The TMA should help facilitate this objective.

  1. Trademark Applications Originating from Outside the United States

A couple of years ago the United States Patent & Trademark Office (“USPTO”) made it an administrative requirement that foreign trademark applicants must be represented by a U.S. licensed attorney. This was done to help reduce fraud on the USPTO by some foreign applicants whose applications too often indicated that they were actually using their marks in the United States, a requirement under U.S. law, when in fact they were not.

The TMA now tackles this on-going problem legislatively.  Due to on-going 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 USPTO to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be suspect.  Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings.  The commentator has successfully represented clients in cancellation proceedings before the Trademark Trial and Appeal Board which generally involve adherence to the Federal Rules of Civil Procedure.   And yes, these proceedings can take a while to complete.

A potential bona fide trademark applicant may find that a third party has a registered mark that will likely prevent registration of the applicant’s mark on likelihood of confusion grounds.  The applicant could attempt to obtain cancellation of the registered mark, but again such a proceeding can be costly and take a long time.  The TMA provides streamlined procedure for challenging issued registrations.

The TMA also calls for a broadening of the scope of evidence that a third party may submit for consideration by the examining attorney during examination of another pending application (including evidence of non-use).  Both changes will help clear the way for legitimate trademark users to obtain registration of their marks.

Finally, 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.

  1. Take-Home Points
  • Foreign trademark applicants need to understand that the U.S.’s requirement for bona fide trademark use within the U.S. is a requirement for both obtaining registration of the mark and maintaining registration of the mark. Any foreign trademark applicant should utilize the services of a U.S. trademark attorney who will presumably require proof of usage in the U.S. as part of the documentation provided to the USPTO.
  • Thanks to the TMA, trademark applicants now have more options to contest suspect registrations. This can be particularly beneficial to smaller business owners by reducing the overall costs involved.
  • Thanks to the TMA, registered trademark owners need not prove irreparable harm to obtain an injunction providing the other elements are met. Again, this can be particularly beneficial to smaller business owners by reducing the overall costs involved.

Questions About Trademark Matters?

Contact Susan Troy at 305-279-4740 for legal matters involving trademark applications and trademark infringement.  We are here to serve you and answer your questions related to intellectual property & business law.  See her reviews at www.avvo.com where she has received Client’s Choice Badges for both 2019 and 2020.  She is also a registered patent attorney.

 

WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE.  IF YOU ARE CONTEMPLATING ANY ACTION THAT MAY HAVE LEGAL CONSEQUENCES, CONSULT WITH AN ATTORNEY.

 

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Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740

 

 

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