Innovative Patent & Intellectual Property Attorneys

The Trademark Modernization Act of 2020

| Feb 9, 2021 | Trademarks

Recent omnibus legislation passed on December 27, 2020 addresses areas of intellectual property law that have presented challenges to trademark owners and the U.S. Patent and Trademark Office (USPTO) for a long time.

The Trademark Modernization Act of 2020 (TMA) contains initiatives that improve the integrity of the federal trademark register, as well as addressing the judicial processing of copyright infringement cases. The legislation helps U.S. businesses to make informed branding decisions when registering their trademarks.

Providing new procedures that will challenge trademark applications and registrations on non-use grounds will help combat the practice of fraudulent or inaccurate claims of use and give trademark owners relief when combating that fraud.

Presumption of irreparable harm

The TMA re-establishes the theory of presumption of irreparable harm when a trademark owner’s brand is infringed, which is required for them to obtain injunctive relief. The Supreme Court ruling in eBay Inc. v MercExchange, LLC, 547 U.S. 388 (2006), created a split in appellate court rulings in which many courts viewed the presumption of irreparable harm to be no longer valid.

The TMA amends Section 34 of the Lanham Act (15 U.S.C. 1116) by adding a rebuttal presumption of irreparable harm if there is a finding of infringement, which is then more likely to allow a preliminary injunction to halt trademark infringements.

Procedures to challenge existing registrations for non-use

The TMA also amends the Lanham Act by adding two sections that allow trademark owners to challenge trademark registrations on the grounds of non-use:

  • Section 16A provides for a third party to file a petition for expungement of a trademark registration on the grounds of non-use within three years of issuance.
  • Section 16B allows a third party to file, within five years of a registration’s issuance, a petition for reexamination of a registration on the grounds that the trademark was not in use in U.S. commerce before the registration date.

Either petition will be filed with the USPTO Director and requires a verified statement that a reasonable investigation was conducted of the trademark’s non-use in commerce.

For the Minnesota business owner, the trademark reflects everything associated with the business’s reputation, including the brand, goods and services and connections to customers. Protecting trademark rights is paramount, and having effective and established legal services to help can enforce your brands while reducing the risk of litigation.


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