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 application. Finally, the TMA authorized the USPTO Director to reconsider, modify, or set aside certain decisions made by the Trademark Trial and Appeal Board.
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.