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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John Laurence

John C. Laurence is the founder of John C. Laurence Law, PLLC. He received his B.S. in Electrical Engineering from Polytechnic University and his J.D. from New York Law School. He is a member of the New York State Bar, the U.S. Patent and Trademark Office (Patent Bar), and the District Court of the Southern District of New York.

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