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Trademark Modernization Act

In an effort to help combat an increase in fraudulent trademark filings and registrations, the Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 202. The TMA addresses improper use claims and fake or doctored specimen submissions for trademarks by providing new mechanisms for challenging trademark applications and registrations on non-use grounds. The TMA also addresses the enforcement of trademark registrations by making it easier for trademark registrants to obtain injunction relief against alleged infringers. Letter of Protest Third parties may challenge a pending trademark application before that application is published for opposition by submitting a letter of protest to the USPTO. A Letter of Protest enables a third party to submit evidence that supports a ground for refusing registration of another party’s pending trademark. This submission differs from a conventional trademark opposition, which is filed during the thirty days that the application is published for opposition. Unfortunately, the Letter of Protest process has been underutilized due to the USPTO not having a formal process for submitting and reviewing Letters of Protest. The TMA tasks the Director of the USPTO to develop formalized processes for submitting and evaluating evidence by third parties supporting the refusal of another party’s pending trademark application. The Director is tasked with establishing these processes within a year. Once the USPTO formalizes the processes for submitting and evaluating Letters of Protest, trademark watch services that provide trademark owners with notice of potentially conflicting trademark applications will become even more critical. Ex Parte Expungement and Reexamination Proceedings In contrast to other countries, the US requires submission of a sworn statement of use that includes a first use date and a specimen demonstrating use of the mark for the defined goods and services before a trademark registration will issue.  A significant problem for the USPTO and legitimate trademark owners has been false assertions of use and fake specimens of use. The TMA established the new Expungement and Reexamination procedures to help alleviate some of these problems. Currently, inter parte Cancellation proceedings allow for petitions before the Trademark Trial and Appeal Board (TTAB) to cancel trademark registrations for abandonment or lack of use. This proceeding is similar to court litigation in that both the petitioner and the trademark owner must engage in the proceedings in an attempt to prove their case before the TTAB. The new ex parte Expungement and Reexamination Proceedings may also be used to petition to cancel a trademark registration for lack of use. However, in contrast to existing Cancellation proceedings, the petitioner will not continue to engage after filing the petition with the USPTO Director. Also, the USPTO Director has discretion on the commencement of either the Expungement and Reexamination Proceeding. The ex parte Expungement Proceeding provides for third-party filing of a petition for an expungement of a trademark registration on the ground that the trademark was never used in US commerce. A petition for expungement cannot be brought until three years after the registration’s issuance and remain available for the registration’s lifetime. The Reexamination Proceeding provides for third party filing of a petition for a reexamination of the trademark registration on the ground that the trademark was not used in US commerce before its relevant date, the relevant date being either the filing date of a use-based application or the statement of use date of an intent-to-use application. A petition for reexamination must be brought within five years of the registration’s issuance.  In both proceedings, the petitioning party must raise relevant arguments, submit supporting proofs, and pay a fee. The USPTO Director will decide whether or not a proceeding will be instituted. The USPTO Director may also commence both proceedings on his or her initiative. If a proceeding is initiated, the registrant may respond with evidence demonstrating the trademark’s use for the subject goods and services or that the non-use is excusable. Restoring Presumption of Irreparable Harm Preliminary injunctions are a valuable tool for trademark owners when combating trademark infringement. The TMA resolves a circuit split as to the standard for issuing preliminary injunctions in trademark infringement, cybersquatting, and false advertising matters. A showing that a trademark owner will suffer irreparable harm is a requirement for preliminary injunctions and other injunctive relief. The TMA restores the presumption that a trademark owner will suffer irreparable harm when either trademark infringement is found or it is shown a likelihood of success of prevailing on the merits in a preliminary injunction context. With this legislation, the TMA has restored a necessary element for trademark owners seeking injunctive relief from infringement of their trademark.

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TEACHING AWAY AND MOTIVATION TO COMBINE

Teaching away and motivation to combine are defenses that may be used to help overcome an obviousness-type rejection of claims in a patent or patent application. In General Electric Company v. Raytheon Technologies Corporation, General Electric (GE) appealed a decision by the Patent and Appeal Board (Board) that a patent for a two-stage turbine engine owned by Raytheon Technologies (Raytheon) was nonobvious. GE argued to the Board that the patent was obvious over the combination of two references, Wendus and Moxon. Wendus teaches a one-stage high-pressure turbine. Moxon teaches that a transition from a two-stage design to a single-stage design is unlikely because of the increased performance demands required to improve a single-stage turbine engine’s fuel efficiency. The Board held that Wendus taught away from a combination with Moxon and that the evidence presented as a whole did not demonstrate a motivation to combine the two references. In its appeal before the Court of Appels (Court), GE challenged the Board’s legal standard for both teaching away and motivation to combine as applied in its nonobvious holding. According to the Board, Wendus taught away from a combination with Moxon because it expressly considered at least some of the tradeoffs between one-stage and two-stage designs and specifically chose the one-stage design. In reviewing the Board’s application of teaching away, the Court stated that “a reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit, or otherwise discourage investigation into the invention claimed.” The Court explained that Wendus did not make a single negative statement about the use of a two-stage high-pressure turbine. Rather, Wendus teaches that a one-stage turbine might be lighter and cheaper to manufacture and maintain than a two-stage turbine. However, teaching that a specific design may be optimal or standard for a defined set of criteria does not criticize, discredit, or otherwise discourage investigation into other designs. A such, the Court held that Wendus did not teach away from a combination with Moxon. According to the Board, because Wendus specifically chose a one-stage design, the evidence presented in the proceeding as a whole could not persuasively demonstrate a motivation to modify. The Court noted that its precedent does not require that the motivation to combine be the best option but rather only a suitable option from which the prior art does not teach away. Rather, “any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed.” Also, a design preference might have simultaneous advantages and disadvantages which do not necessarily obviate a motivation to combine. As such, the Court held that the Board lacked substantial evidence for its conclusion that GE did not establish a motivation to combine the references. The Court further held that it did not matter that GE did not explain why an artisan would be motivated to use each element disclosed in Wendus. That Wendus treats each of the disclosed elements as desirable was enough to motivate an artisan to combine them with a two-stage turbine, as long as the artisan believed there was a reasonable likelihood that the combination would succeed. In prosecuting a patent application or enforcing an issued patent, it is important to understand how these defenses may be applied effectively against an obviousness-type rejection. Contact John C. Laurence Law Today Why hire a patent attorney? The answer is simple: to help you protect your business. John C. Laurence is experienced in developing, prosecuting, and enforcing patent rights. He understands the patent process, leverages your patent to earn money for you, and protect your patent from infringement. If you have questions about patent rights and how to move forward, contact John C. Laurence Law online or at 917-997-9967 for your free consultation.

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