Wednesday, 30 December 2020 14:43

Happy Holidays from Congress: Trademark Modernization Act of 2020

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On December 21, 2020, Congress passed a $900 billion pandemic relief and government funding package. In the over 5,500-page bill, the lawmakers included the Trademark Modernization Act of 2020 ("TM Act of 2020" or “TMA”)1. On December 27, 2020, the TMA became law, effective a year from the date of the President’s signature. Some of the changes and/or additions are discussed below.
 
Particularly, the TMA clarified and created a uniform standard for obtaining injunctive relief in litigation under the Lanham Act: “A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.”  Further, the TMA authorized the UPSTO to shorten office action response periods, by regulation, from 6 months to a time period between 60 days and 6 months. Applicants may request extensions of time to reply or amend “aggregating six months from the date of notification,” if the request is filed on or before the date on which a reply or amendment is due. The TMA also created a new mechanism to allow individuals to file petitions to expunge2 or re-examine3 trademark registrations based on an argument that the mark is not currently or has has never been used in commerce in connection with the identification of goods and/or services. The TMA codified the existing letter of protest procedure, permitting third-parties to submit evidence bearing on the registrability of an applied-for mark.  Under this act, the USPTO Director will have two months to review the evidence and determine whether evidence should be included in the record of the applicationFinally, the TMA authorized the USPTO Director to reconsider, modify, or set aside certain decisions made by the Trademark Trial and Appeal Board.
 
1. See H.R. 6196; S. 3449.
2. A registration may be challenged through the expungement proceeding within 3 and 10 years of the registration date. 
3. A registration may be challenged through the reexamination proceeding within 5 years of the registration date.
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Emily Mola

Ms. Mola earned her Bachelor’s degree in History, magna cum laude, from the Florida International University, and a Juris Doctor degree and Certificate in Intellectual Property Law from the Florida International University, College of Law. While at FIU Law, she served as the President of the Intellectual Property Student Association. As a result of her dedication to intellectual property law, she earned three CALI Excellence for the Future Awards in focused academic coursework. Ms. Mola is the recipient of the International Trademark Association’s 2020 Ladas Memorial Award for her article, Trademark Law’s Capability to Protect Traditional Cultural Expressions from Unauthorized Borrowing and Theft. Ms. Mola is a 2018 Microsoft/Hispanic National Bar Association’s Intellectual Property Legal Institute scholar.