By Michele Hufferd
On December 27, 2020, Congress enacted the U.S. Trademark Modernization Act (H.R. 6196) as part of the most recent Covid relief bill. The Act amends the Trademark (Lanham) Act in three ways:
The Act clarifies the evidentiary burden to obtain an injunction in trademark infringement litigation in that it allows for a presumption of irreparable harm in trademark actions. This rule will help trademark owners enforce their rights against infringers in Federal court.
The Act provides for third-party submission of evidence during examination at the U.S. Patent and Trademark Office. The determination shall not prejudice any party’s right to raise any issue and rely on any evidence in any other proceeding. The USPTO has a two-month deadline to act on third-party submissions (Letters of Protest), and a $50.00 fee for those submissions, which went into effect on January 2, 2021.
Finally, the Act also provides new procedures for review and cancellation of fraudulently-obtained registrations.
- A registration can be challenged on the basis that a mark was never properly used in commerce. A Petition can be filed any time from three years to before the expiration of ten years following the date of registration.
- Registrations can be challenged on the basis that the trademark was not used in commerce prior to the relevant registration date. Petitions may be filed at any time not later than five years after the date of registration of a mark registered based on use in commerce.
- Under both sections, the Director can initiate removal or reexamination proceedings independent of a third-party filing if information creating an obvious case comes to the Director’s attention.
- Both sections bar subsequent challenges under the same goods and services once the registration has survived a challenge under that section, regardless of the identity of the challenger.
The Director has the authority to set office action response periods that are shorter than the current six-month response time, but not less than 60 days. An applicant can still request extensions to have the full six months.
The changes made by the U.S. Trademark Modernization Act will go a long way in assisting trademark owners with fighting trademark infringement.