Trademark Modernization Act of 2020
If you currently own a trademark, or have interest in applying for a trademark, it is important to gain a general understanding of a new federal law that was enacted at the tail end of 2020. The new law is the Trademark Modernization Act of 2020. Congress passed this legislation and the President signed it into law on December 27, 2020 as part of the Families First Coronavirus Response Act. There are an array of significant modifications and amendments made to the Trademark (Lanham) Act.
Summary of Changes
Below are some of the most significant modifications made to trademark law under the Trademark Modernization Act of 2020:
- Providing clarification on the evidentiary requirements needed to secure injunctive relief in a trademark infringement lawsuit;
- Modifying specific procedures in trademark prosecution that takes place before the S. Patent and Trademark Office (USPTO); and
- Establishing new procedures for the cancellation of fraudulent registrations in an effort to assist in the fight against fraudulent foreign trademark registrations.
Let’s take a look at each of these modifications.
New Evidentiary Requirements
The new law amended Section 34 of the Trademark Act of 1946 in order to establish that irreparable harm can be presumed in requests for injunctive relief upon a finding of trademark infringement. This was necessary since appellate courts were divided on whether irreparable harm could be presumed in a trademark lawsuit or if they needed to engage in an analysis of four specific “equitable” factors before finding harm.
New Protocols for Trademark Prosecution Before the USPTO
The new law created a series of new protocols that must be followed in trademark prosecution conducted before the USPTO. For example, third parties are now able to submit evidence into the record of an application, but only when that evidence is tied to a particular ground for refusal.
New Expungement Procedures
Section 16A of the law establishes new expungement procedures where a registered trademark can be challenged on the basis that the mark was never properly used in commerce, which is usually required for registration. The new law established that a petitioner is obligated to submit evidence of a “reasonable investigation” along with their petition. If there is a finding that a prima facie case exists, expungement proceedings will be initiated and notice will be provided to the registrant. This petition may be filed within three years after registration.
Section 16B of the new law establishes similar reexamination protocols, but registrations may be challenged on the basis that the trademark was not used in commerce prior to the relevant registration date. Similar to the prerequisites in Section 16A, any individual has the ability to petition for reexamination under Section 16B, provided that they are able to submit evidence of a reasonable investigation such as to create a prima facie case. However, it is important to note that a petition filed pursuant to Section 16B must be filed within the first five years that a trademark is registered based on its use in commerce.
Have Questions? Contact an Experienced Trademark Lawyer in Los Angeles Today
If you have questions about the impact of this new trademark law, take action by contacting the highly reputable Omni Legal Group. Omni Legal Group is a premier Patent, Trademark, and Copyright law firm located in Los Angeles. For further information or to schedule a consultation please contact Omni Legal Group at 855.433.2226 or visit www.OmniLegalGroup.com to learn more.