The Trademark Modernization Act of 2020 (TM Act) is included in Subtitle B of the Consolidated Appropriations Act of 2021, signed into law on December 27, 2020. This law will make several statutory changes to the Trademark Act; each of these changes will be addressed in further detail below.
Third-Party Submissions of Evidence
The first amendment to the Trademark Act allows any third party to submit evidence relevant to a ground for refusal of registration to be considered by the Director for inclusion in the record of a trademark application.[i] This essentially codifies the USPTO’s letter of protest procedure, which currently exists as an informal process created by and existing at the discretion of the USPTO. [ii] The legislation only specifically requires that third-party submissions include a concise description of each piece of evidence submitted in support of each ground for refusal, with all additional procedures for consideration of evidence, including any associated fees, to be established separately by regulation.[iii] Thus, although this is a change to the law itself, it may not result in much of a change to the existing procedures.
Shortened Response Periods
The next amendment pertains to the amount of time a trademark applicant is allowed to respond to a USPTO office action. Currently, an applicant is always allowed a full 6 months from the office action’s date of issuance to respond, with no associated fee, and the examining attorney has no discretion to shorten or extend this period.[iv] Although the new law retains the maximum statutory response period of 6 months, it allows the Director to shorten, by regulation, the initial time an applicant has to respond to an office action without paying an additional fee, to as little as 60 days.[v] The applicant will then be allowed to obtain extensions of time, up to the maximum 6 months from notification, with each extension costing an additional fee to be determined by the Director.[vi] If a response deadline is missed, the application will be deemed to be abandoned.[vii] An abandoned application may be revived, for a fee to be prescribed by the Director, where the applicant is able to show to the satisfaction of the Director that the delay in responding was unintentional.[viii] It will be important going forward to note any regulatory changes to office action response times to avoid incurring additional fees or risking abandonment of the trademark application.
New Grounds for Cancellation, Ex Parte Expungement, and Ex Parte Reexamination
The TM Act creates new grounds for persons to bring a cancellation proceeding of a trademark owner’s existing registration. Currently, a person who believes they are or will be damaged by a registered mark may bring a cancellation proceeding before the TTAB within 5 years of the mark’s date of registration or for several other grounds with no time limit, including genericness, abandonment, or geographic descriptiveness.[ix] The new law will allow challengers to bring a cancellation proceeding any time after the 3-year period following the date of registration on the basis that a registered mark has never been used in commerce on or in connection with some or all of the goods or services recited in the registration.[x]
In addition to expanding the grounds for bringing an inter partes cancellation proceeding, the TM Act creates two new ex parte methods for challenging existing trademark registrations: ex parte expungement and reexamination.[xi] Currently, the petition to cancel is the only manner in which a person may cause a trademark owner’s registration to be removed from the Principal or Supplemental Register.[xii] However, legislators noted that a cancellation can be a long and expensive process, deterring many small and medium sized business from challenging these registrations.[xiii] In response to this problem, the new law allows any person to file a petition for expungement or reexamination of a registration on the basis that the mark was not in use in commerce on or in connection with some or all of the goods or services recited in the registration.[xiv] In particular, a petition for expungement will cause examination of a mark which a petitioner alleges has never been used in commerce, and a petition for reexamination will cause review of whether a mark for which use was claimed at the time of registration was, in fact, in use in commerce at the time the application or the allegation of use was filed prior to registration.[xv]
Note that, for the purposes of these cancellation procedures, a showing that a registered mark has not been used in commerce in connection with just some of the goods and services listed in the registration will not be grounds for full cancellation of the mark.[xvi] The mark will be cancelled to the extent that it has not actually been used in commerce.[xvii]
Presumption of Irreparable Harm
Lastly, the TM Act creates a statutory rebuttable presumption of irreparable harm for plaintiffs seeking injunctive relief under the Lanham Act. This change definitively lightens the evidentiary burden for trademark owners seeking injunctions and clarifies the uncertainty in the courts brought about by the Supreme Court’s decision in eBay, Inc v. MercExchange, LLC, which held that irreparable harm could not be presumed upon a showing of patent infringement.[xviii]
[i] PL 116-260, 134 Stat 1182, 2201 (Dec. 27, 2020).
[ii] TMEP § 1715.
[iii] PL 116-260, 134 Stat 1182, 2201 (Dec. 27, 2020).
[iv] TMEP §711; 15 U.S.C. §1062(b).
[v] PL 116-260, 134 Stat 1182, 2201 (Dec. 27, 2020).
[ix] TBMP § 307.01; 15 U.S.C. § 1064.
[x] PL 116-260, 134 Stat 1182, 2204 (Dec. 27, 2020).
[xi] PL 116-260, 134 Stat 1182, 2202-2205 (Dec. 27, 2020).
[xii] TBMP §301.01
[xiii] H. Rept. 116-645 (2019-2020).
[xiv] PL 116-260, 134 Stat 1182, 2202-2205 (Dec. 27, 2020).
[xvi] H. Rept. 116-645 (2019-2020).
[xviii] H. Rept. 116-645 (2019-2020); See eBay Inc., v. MercExchange, LLC, 547 U.S. 388 (2006).