The Trademark Modernization Act of 2020 ("TMA") became law on December 27, 2020 and takes effect on December 27, 2021. The Act provides the following: (1) new procedures to remove registrations based on inaccurate claims of use in commerce--Letters of Protest; ex parte expungement; and ex parte reexam; (2) discretionary shortened response deadlines to office actions; and (3) rebuttable presumption of irreparable harm.
Letters of Protest: TMA expands existing Letter of Protest procedures to allow third parties to submit evidence of conflicting prior registration and evidence that applied-for mark is not actually in use for the goods/services and thereby challenge a trademark application during the examination stage. The current rules only allow Letters of Protest to issues of genericness, prior registrations, ongoing litigation, and examiner error in calculating priority under Paris Convention.
Ex Parte Expungement: Under Section 16A of TMA, anyone may petition to expunge a registration, three years after its issuance and before expiration of 10years from registration date, where the trademark has never been used in commerce for specific goods/services listed in the registration. Party is required to provide evidence of "reasonable investigation" showing the registered mark was never used for the identified goods/services.
Ex Parte Reexamination: Under Section 16B of TMA, any person may petition, no later than 5years after registration, to reexamine a registration on the basis that the mark was not in use in commerce with some or all of the goods/services in the registration as of the relevant date. The "relevant date" means the date when a use-based application was initially filed under Section 1(a), the date an amendment to allege use is filed under Section 1(c), or the date a statement of use is filed under Section 1(d).
PTO Office Action Response Periods: Examiner will have the discretion to set office action response periods that are shorter than 6-month but no less than 60 days with the applicant having the flexibility to seek extensions.
Rebuttable Presumption of Irreparable Harm: A trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits.
Letters of Protest: TMA expands existing Letter of Protest procedures to allow third parties to submit evidence of conflicting prior registration and evidence that applied-for mark is not actually in use for the goods/services and thereby challenge a trademark application during the examination stage. The current rules only allow Letters of Protest to issues of genericness, prior registrations, ongoing litigation, and examiner error in calculating priority under Paris Convention.
Ex Parte Expungement: Under Section 16A of TMA, anyone may petition to expunge a registration, three years after its issuance and before expiration of 10years from registration date, where the trademark has never been used in commerce for specific goods/services listed in the registration. Party is required to provide evidence of "reasonable investigation" showing the registered mark was never used for the identified goods/services.
Ex Parte Reexamination: Under Section 16B of TMA, any person may petition, no later than 5years after registration, to reexamine a registration on the basis that the mark was not in use in commerce with some or all of the goods/services in the registration as of the relevant date. The "relevant date" means the date when a use-based application was initially filed under Section 1(a), the date an amendment to allege use is filed under Section 1(c), or the date a statement of use is filed under Section 1(d).
PTO Office Action Response Periods: Examiner will have the discretion to set office action response periods that are shorter than 6-month but no less than 60 days with the applicant having the flexibility to seek extensions.
Rebuttable Presumption of Irreparable Harm: A trademark owner seeking injunctive relief is entitled to a rebuttable presumption of irreparable harm upon a finding of infringement or a likelihood of success on the merits.
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