US Trademark Modernization Act Ushers A New Dawn For Trademark Owners

The TM Act of 2020 was signed into law on December 27, 2020. Its main aim was to offer trademark owners more protection. It entails amendments to help combat cases of fraudulent trademark applications and registrations that had beset the US Patent and Trademark Office (USPTO) for years. The provisions make it easier for a trademark registrant to obtain an injunction when their rights under subsection (a), (c), or (d) of section 1125 of the Lanham Act (15 US Code § 1125) are infringed. It’s easier and faster for a person to challenge a trademark application and registration on the grounds of non-use. These are the key provisions:

1.  Rebuttable Presumption of Irreparable Harm

The Act amended section 34(a) of the Trademark Act of 1946 (15 US Code 1116(a)), adding provisions that make it easier for trademark owners to seek injunctive reliefs.  According to the amendment, a trademark infringement will always result in irreparable harm.

The amendment makes it easier and cheaper (which was not the case before) for trademark owners to protect the integrity of their trademark. They will not be forced to undertake expensive steps like nationwide consumer surveys to prove irreparable harm; as long as you can prove there is a trademark infringement, then the injunction will be granted.

2.  Cancellation for non-use of a trademark

For one to maintain a trademark in the US, you need to use it continually. You can challenge a trademark if it’s used little or not at all or used in an altered form. It’s now easier and faster for third parties to challenge non-use of a trademark under the TM Act. The amendments allow third parties to initiate ex parte proceedings before the USPTO to reexamine or cancel a trademark registration.

Ex parte cancellations

A third party can file for an ex parte cancelation of a trademark registration that has never been used in the US. This application must be made within 3 years of the date the registration was issued.

Ex parte reviews

This concerns trademarks that are no longer in use in the US. The application must be filed within 5 years of the date of grant of the restriction.

3.  Fast-tracking of opposition against unauthorized trademark applications

Initially, oppositions lodged before a trademark was registered were simply informal letters of protest, and the USPTO examiner had full discretion to ignore the evidence. It’s now possible to present an opposition against unauthorized trademark applications before the trademark application is published.  The USPTO should have, as stipulated by the Act, a corresponding procedure in place to handle such opposition before the end of 2021.

These amendments protect original trademark owners and help level the playing field. More importantly, it is a legislative response to the problems caused by false claims of use and fake specimens of use, which have been rampant in the US. We are a team of trademark law professionals here to represent you and help you protect your brand. Contact us today for any issues on trademark and intellectual property in general.