This past week, Congress made several significant changes to the United States trademark law. As part of the larger bipartisan coronavirus relief package, the Trademark Modernization Act of 2020 (TMA) amends the existing Trademark Act of 1946. If signed by the President, the TMA will result in several beneficial changes.

What is in the Trademark Modernization Act?

Trademark Modernization Act of 2020
The Trademark Modernization Act of 2020

The TMA provides for a number of significant changes, including:

Shortened Timelines

A shortened timeline for responding to trademark Office Action. Once implemented by the USPTO, the program will likely function similarly to the procedures used when responding to patent Office Action. Specifically, Applicants will have the option to “buy” an extension of time from the USPTO to respond to the outstanding Office Actions.

Third Party Evidence Submission

The TMA also provides for third parties to submit evidence during the examination of any application. Third parties (i.e., competitors) can submit evidence against registration for consideration by the examining attorney during the examination of an application. This program will help competitors avoid costly opposition or cancellation proceedings down the road. Furthermore, the change underscores the importance of having a trademark watch service set up for competitors. An effective trademark watch service will permit applicants and/or registrants to effectively monitor their competitor’s trademark filings.

Trademark Non-Use

Furthermore, the TMA provides new ways for third parties to challenge registered trademarks for non-use. This portion of the TMA helps reduce the number of fraudulent trademark registrations from foreign countries, namely China. Additionally, the new procedure will help “cleanse” trademarks from the database that are not actually used in commerce. This helps third parties avoid going through costly Cancellation Procedures.

Irreparable Harm

Additionally, the TMA settles conflicting case law holdings by creating a statutory rebuttable presumption of irreparable harm. Specifically, the TMA clarifies that “for trademark violations, a rebuttable presumption of irreparable harm exists given the consumer protection concerns that would occur otherwise.”

If the President signs the TMA into law, the new changes would take effect on January 1, 2021.

Has the Trademark Modernization Act of 2020 become law?

As of the writing of this post (12/25/2020), the TMA has not become law yet. While the TMA has passed Congress, it is still awaiting the President’s signature.

Will the Trademark Modernization Act shorten response times?

Likely yes. As of December 28, 2020 the standard response time is always six (6) months. The Act will allow the USPTO to reduce response times to sixty (60) days. Additional time to respond (still up to the six month maximum) will require a fee. Failure to pay the extension fee may result in abandonment.

What is ex parte expungement of a trademark registration?

Under the Trademark Modernization Act, a third party may remove or narrow a trademark registration on the basis it was never used in commerce or some of its recited products/services were not used.

As a trademark registrant, can multiple ex parte expungement proceedings be brought against me?

No. Not even co-pending proceedings are allowed. Once you’ve survived an ex parte expungement challenge, all other parties are estopped (barred) from challenging your registration again.

Under the Trademark Modernization Act, what is the difference between Expungement and Reexamination?

For expungement, any person may file a petition to expunge a registration on the basis that the mark has never been used in commerce for some or all of the goods/services recited in the registration. For a reexamination, the question is whether the mark was used on or before the relevant date. The relevant date is the date of first use for an “in-use” application. For an intent-to-use (ITU) application, the relevant date is the amendment to allege use (AAU) or the statement of use (SOU) date.

When do expungement and reexamination of trademark registrations start?

The Trademark Modernization Act requires the USPTO Director to issue regulations within one year of passage of the act. Therefore, it is likely these proceedings will start before the end of 2021.