Trademark Modernization Act – Understanding Key Provisions of the New Law

The Trademark Modernization Act (TMA) is now law...

The Trademark Modernization Act (TMA) is now law. The legislation, which makes several significant changes to U.S. trademark law, was incorporated into the Consolidated Appropriations Act of 2021 that was signed into law on December 27, 2020. 

Of particular importance, the TMA establishes a uniform standard for obtaining injunctive relief in litigation under the Lanham Act, clarifying that all courts must apply the rebuttable presumption of irreparable harm. The new law also makes a number of other changes to the Lanham Act, including new post-registration reexamination and expungement procedures aimed to address the growing number of trademark registrations for marks not actually being used in commerce.

Below is a brief summary of several key changes under the TMA:

• Rebuttable presumption: The TMA provides that a trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits.
• USPTO Response Deadlines: The TMA authorizes the U.S. Patent and Trademark Office (USPTO) to set office action response periods that are shorter than the current six-month response time but not less than 60 days. Applicants may request extensions to have the full six months. The Director of the USPTO may set the number, length and fee for extensions of time by rule.
• Letters of Protest: The TMA provides statutory authority for the longstanding USPTO Letter of Protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a trademark’s registrability. The USPTO must act on such submissions within two months. The new law further provides that the USPTO’s decision on whether to include the evidence in the application record is final and non-reviewable. The USPTO has already issued rules setting out submission procedures and establishing a $50 fee. The rule requires that the submission must identify each legal ground for an examining attorney to refuse registration or issue a requirement, including evidence that supports those grounds and a concise description for each piece of supporting evidence.
• Expungement and Reexamination Proceedings: The TMA establishes new ex parte proceedings to expunge (remove) or reexamine a registration for a trademark that either has never been used in commerce or was not used in commerce before a particular relevant date. An expungement proceeding, which seeks to 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, must be brought between three to ten years after the registration date. A reexamination proceeding, which seeks to remove some or all 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, must be brought within the first five years after the trademark registers and is generally directed at registrations where a questionable specimen was submitted as evidence of use in commerce of the trademark during examination of the underlying application. Upon the filing of a petition, the USPTO must determine whether the expungement or reexamination petition establishes a prima facie case that the trademark was never used in commerce or was not in use in commerce as of the relevant date. If so, the USPTO will grant the petition, institute the proceeding, and require the registrant to respond with evidence of use or excusable nonuse. Based on consideration of all the evidence, the USPTO will decide whether to remove some or all of the challenged goods or services in the registration. If the USPTO determines that the registrant had used the trademark with some or all of the challenged goods or services in either proceeding, no new or further ex parte expungement or reexamination challenges will be permitted against those same goods or services. If the USPTO does remove some or all of the goods or services, the registrant may appeal this decision to the Trademark Trial and Appeal Board (TTAB) and then to the U.S. Court of Appeals for Federal Circuit. The Director of the USPTO can initiate either of these proceedings without a third party petition if the Director discovers information that supports a prima facie case that the trademark has never been used in commerce or has not been used in commerce as of a particular relevant date with certain goods or services covered by the registration.

What’s Next?

The Letter of Protest, expungement, and reexamination provisions will take effect on December 27, 2021.  The other provisions became effective upon enactment. Some will, however, require the USPTO to enact implementing regulations. No rulemaking is necessary to give effect to the rebuttable presumption provision.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact the Scarinci Hollenbeck attorney with whom you work, at 201-896-4100.