The Trademark Modernization Act — Greater Protections for Trademark Owners

The Trademark Modernization Act of 2020 ("TMA"), signed into law on December 27, 2020, provides trademark owners with additional tools to challenge registered marks that are no longer in use or have never been used on the goods or services claimed in the registration.  It also establishes a rebuttable presumption of irreparable harm in trademark actions for injunctive relief.  The TMA is hailed as one of most significant pieces of trademark legislation in many years.

The highlights are as follows:

• Two new post-registration ex parte procedures to challenge registrations. The purpose is to aid in removing registrations for fraudulent and unused trademarks.

1. 1. 1. Any person may request that the USPTO remove some or all of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. This new procedure must be brought between three to ten years after the registration date.
      2. Any person may request that the USPTO remove some or all of the goods or services in a registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. This new procedure must be brought within the first five years after the registration date.

• New grounds for cancellation. At any time following three years from registration a cancellation proceeding may be filed with the Trademark Trial and Appeal Board on the grounds that a registered trademark has never been used in commerce.
• Changes to the letter of protest procedure. The letter of protest procedure, which allows any person to submit evidence relevant to a ground for refusal of registration of a pending trademark application, has been codified.  The TMA provides that the USPTO must review the evidence submitted with a letter of protest within a two month period.  It expands the grounds for filing a letter of protest to include non-use of the mark on the goods or services.
• Changes to the time period for responses to office actions. At the current time all responses to office actions must be filed within six months of the date of the office action.  Under the TMA, the USPTO will have the flexibility to set shorter time periods for certain office action responses.
• Irreparable Harm Presumption. The TMA establishes a rebuttable presumption of irreparable harm to a trademark owner upon a finding of trademark infringement in a motion for a permanent injunction, or upon a finding of a likelihood of success on the merits in a motion for preliminary injunction. This resolves a split in circuits, and makes it easier for trademark owners to obtain injunctive relief.

In summary the TMA adds tools for reducing the number of trademark applications and registrations based on fraudulent or inaccurate claims of use in commerce, gives the USPTO flexibility in determining times for response to office actions, thereby potentially speeding up the examination process, and codifies the presumption of irreparable harm for infringement.