effects of the traDeMark MoDernization act of 2020
Intellectual Property Section Chairs : Elana Faniel - Greenway Law Firm , P . A . & Patrick Reid - Burr & Forman LLP
The Trademark
Modernization Act of 2020 ( the TM Act ) 1 was signed into law on December 27 , 2020 , as part of the 2021 Consolidated Appropriations Act . 2 The TM Act amends the Trademark Act of 1946 , or the Lanham Act , 3 providing the United States Patent & Trademark Office ( USPTO ) with more tools to combat the false and inaccurate trademark applications and registrations filed by foreign entities . 4
Third Party Submission of Evidence
Section 1 of the Lanham Act now will permit a third party to submit evidence in support of a refusal of a trademark application . Once the evidence is submitted , the Examining Attorney must determine whether the evidence will be included on the record of the trademark application . This amendment becomes effective on December 27 , 2021 .
Office Action Response Deadlines
Current deadlines to respond to refusals of registrations , called
Office Actions , are six months from the date the Office Action is issued . Section 12 ( b ) of the Lanham Act is amended to permit the Examining Attorney to shorten the response deadline to at least sixty days from the date the Office Action is issued . However , the TM Act allows an applicant to request extensions to a deadline that is under six months .
Expungement and Reexamination Proceedings
Two new proceedings are added in an effort to challenge false registrations . The first , an ex parte expungement proceeding , allows a petitioner to expunge a registration on the grounds that the mark has never been used in commerce . The procedure for expungement proceedings will be the same as the resolution of Office Actions . If the elements of non-use are found , the registration will be cancelled . A petition for expungement may be filed between three to ten years after registration .
the act provides the uspto with more tools to combat the false and inaccurate trademark applications and registrations filed by foreign entities .
In the second new proceeding , an ex parte reexamination , a petitioner must allege that the mark was never used in commerce “ on or before the relevant date .” The relevant date for an “ in use ” or 1 ( a ) application is the date the application was filed . The relevant date for an “ intent to use ” or 1 ( b ) application is the date an amendment to allege use was filed , or once the deadline to file a statement of use has passed . Reexamination proceedings can only be initiated five years after registration .
Presumption of Irreparable Harm
Lastly , to obtain injunctive relief in federal trademark litigation , a plaintiff must prove that the plaintiff would suffer irreparable harm , and that there is no adequate remedy at law . The TM Act resolves a circuit split created by the U . S . Supreme Court in eBay Inc . v . MercExchange , LLC , 5 which
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