Scarinci Hollenbeck, LLC, LLCScarinci Hollenbeck, LLC, LLC

Firm Insights

Trademark Modernization Act – Understanding Key Provisions of the New Law

Author: Scarinci Hollenbeck, LLC

Date: March 19, 2021

Key Contacts

Back
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.

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Scarinci Hollenbeck, LLC, LLC

Related Posts

See all
Admin Dissolution for Annual Report: What You Need to Know post image

Admin Dissolution for Annual Report: What You Need to Know

While filing annual reports may seem like a nuisance, failing to do so can have significant ramifications. These include fines, reputational harm, and interruption of your business operations. In basic terms, “admin dissolution for annual report” means that a company is dissolved by the government. This happens because it failed to submit its annual report […]

Author: Dan Brecher

Link to post with title - "Admin Dissolution for Annual Report: What You Need to Know"
What Is Antitrust Litigation Law? post image

What Is Antitrust Litigation Law?

Antitrust laws are designed to ensure that businesses compete fairly. There are three federal antitrust laws that businesses must navigate. These include the Sherman Act, the Federal Trade Commission Act, and the Clayton Act. States also have their own antitrust regimes. These may vary from federal regulations. Understanding antitrust litigation helps businesses navigate these complex […]

Author: Robert E. Levy

Link to post with title - "What Is Antitrust Litigation Law?"
Dissolving Your Business: Essential Legal Steps to Protect Your Interests post image

Dissolving Your Business: Essential Legal Steps to Protect Your Interests

If you’re considering closing your business, it’s crucial to understand that simply shutting your doors does not end your legal obligations. Unless you formally dissolve your business, it continues to exist in the eyes of the law—leaving you exposed to ongoing liabilities such as taxes, compliance violations, and potential lawsuits. Dissolving a business can seem […]

Author: Christopher D. Warren

Link to post with title - "Dissolving Your Business: Essential Legal Steps to Protect Your Interests"
The Role of Corporate Restructuring in Mergers & Acquisitions post image

The Role of Corporate Restructuring in Mergers & Acquisitions

Contrary to what many people think, corporate restructuring isn’t all doom and gloom. Revamping a company’s organizational structure, corporate hierarchy, or operations procedures can help keep your business competitive. This is particularly true during challenging times. Corporate restructuring plays a critical role in modern business strategy. It helps companies adapt quickly to market changes. Following […]

Author: Dan Brecher

Link to post with title - "The Role of Corporate Restructuring in Mergers & Acquisitions"
Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public post image

Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public

Cryptocurrency intimidates most people. The reason is straightforward. People fear what they do not understand. When confusion sets in, the common reaction is either to ignore the subject entirely or to mistrust it. For years, that is exactly how most of the public and even many in law enforcement treated cryptocurrency. However, such apprehension changed […]

Author: Bryce S. Robins

Link to post with title - "Crypto Enforcement: A Former Prosecutor’s Warning to Criminals and the Public"
Understanding Chattel Paper: A Key Component in Secured Transactions post image

Understanding Chattel Paper: A Key Component in Secured Transactions

Using chattel paper to obtain a security interest in personal property is a powerful tool. It can ensure lenders have a legal claim on collateral ranging from inventory to intellectual property. To reduce risk and protect your legal rights, businesses and lenders should understand the legal framework. This framework governs the creation, sale, and enforcement […]

Author: Dan Brecher

Link to post with title - "Understanding Chattel Paper: A Key Component in Secured Transactions"

No Aspect of the advertisement has been approved by the Supreme Court. Results may vary depending on your particular facts and legal circumstances.

Sign up to get the latest from our attorneys!

Explore What Matters Most to You.

Consider subscribing to our Firm Insights mailing list by clicking the button below so you can keep up to date with the firm`s latest articles covering various legal topics.

Stay informed and inspired with the latest updates, insights, and events from Scarinci Hollenbeck. Our resource library provides valuable content across a range of categories to keep you connected and ahead of the curve.

Let`s get in touch!

* The use of the Internet or this form for communication with the firm or any individual member of the firm does not establish an attorney-client relationship. Confidential or time-sensitive information should not be sent through this form.

Sign up to get the latest from the Scarinci Hollenbeck, LLC attorneys!