Trademark Modernization Act – New Tools in the Trademark Toolkit

The Trademark Modernization Act (the “TM Act”) was passed in December 2020, and puts in place several changes that should be helpful for businesses that are looking to register their trademarks and enforce their trademark rights. The US Patent and Trademark Office (“USPTO”) will add new rules to implement these changes, but some changes are already in effect.

Changes For Prosecution At USPTO

In the past five years, there has been a dramatic increase in trademark filings that appear to be fraudulent, meaning that the products don’t exist, the trademark has never been used, or there is no intention to ever use the trademark in the United States. When these filings lead to a registration being granted, it can make it more difficult for legitimate applications to be approved if they are at all similar to the fraudulent trademarks.

• Letters of Protest

The TM Act adds some clarity and new procedures for submitting a Letter of Protest for a pending trademark application. This could help bring evidence that the USPTO was not aware of to the attention of the examining attorney, and to reject trademarks that should not be registered. This can be much less costly than bringing an opposition or cancellation proceeding.

• Shorter USPTO Response Times

Not every issue requires the standard six-month time to respond. The TM Act allows for the USPTO to set shortened time periods where appropriate. This should speed up the prosecution process.

Changes For Disputes At The Trademark Trial and Appeal Board

For trademarks that are already registered, you can now bring a cancellation proceeding seeking to expunge some of the claimed goods or services from the registration. This can be done within three years of the registration being issued. While it was already possible to cancel a trademark for non-use or abandonment, this adds an additional tool to deal with problematic registrations. Prior to the TM Act, challenging a trademark for non-use sometimes required proving intentional fraud in claiming that the mark was in use.

Changes For Litigation - Presumption of Harm

The TM Act also restores a rebuttable presumption of harm in trademark infringement cases. This means that a plaintiff may not have to specifically prove how they are being harmed by the infringing activities. This can be especially critical when asking a court to enter a preliminary injunction, ordering a stop infringement early in litigation.

Each of these changes will be useful for businesses that are trying to protect their valuable brands. While it won’t eliminate fraudulent registrations, the Trademark Modernization Act gives businesses additional tools to get their own trademarks registered and to enforce their rights.