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The Trademark Modernization Act (TMA) was signed by President Trump on December 27, 2020 as part of the Consolidated Appropriations Act of 2021 which included a COVID-19 relief package. The TMA includes the most significant changes to the Lanham Act in over twenty-five years. The changes will take effect at the end of 2021. A number of the changes are geared towards reducing the number of trademarks on the registry that are not used in commerce and often referred to as “deadwood.” The goal is to make the USPTO registry accurately reflects ownership claims in trademarks.
The TMA provides for tools to clear fraudulent or unused marks from the USPTO registry. An ex parte proceeding is to be created under the TMA where third parties can challenge the validity of marks that are not used in commerce. The TMA provides that third parties can submit evidence relating to a trademark application to oppose the registration of the mark. In addition, the TMA establishes expungement and ex parte reexamination proceedings to challenge the validity of marks that are not in use in commerce. Expungement or reexamination proceedings may also be initiated by the USPTO on the basis of non- use and are unavailable to challenge after the fifth anniversary of the issuance of a registration.
The TMA also provides a new basis for cancellation of a registration, in that a registered mark that has never been used in commerce with any/or all of the relevant goods or services at any time after the three-year period following the date of registration. Finally, the TMA allows the USPTO to set shorter time frames for responding to office actions. U.S. registrations that are based on foreign or international registration without the need to prove use prior to registration may be particularly vulnerable to cancellation, and trademark owners should carefully review their portfolio to avoid challenges under these new proceedings.
In litigation, the TMA restores the rebuttable presumption of irreparable harm to support injunctive relief upon a showing of trademark infringement, which harmonizes a split within the Circuit courts. In this respect, the TMA can be a valuable tool for brand owners looking to enjoin infringers.
DL’s counsel Vivian Rivera Drohan is available to provide you with strategic advice and counsel. If you have any questions about the Trademark Modernization Act, please reach Ms. Drohan at vdrohan@dlkny.com or (212) 710-0004.
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Download the Original Legal Alert (PDF)
View the original Drohan Lee LLP legal alert, published January 5, 2021.
