What to Know About the Trademark Modernization Act of 2020

Over the weekend, President Trump signed the second COVID-19 relief bill. While Coronavirus relief takes center stage in the news, the omnibus legislation is actually a hefty, 5,500+ pages with noteworthy changes to intellectual property law. In this first of three posts, we’ll take a brief look at the coming changes to federal trademark law.

Flexible Response Periods and Extensions of Time – The Trademark Office currently provides applicants a generous six-month window for responding to official communications during the application process. . Under the changes in this new law, the Trademark Office will be able to set shorter response periods, in some cases as short as 60 days. In any instance where a response period is less than 6 months, however, the Trademark Office must provide the applicant with the ability to request an extension of time that, in aggregate, provides as much as 6 months to respond. Extensions may be subject to fees that have yet to be set by the Trademark Office. Unlike in the patent application process, extension requests will have to be filed by no later than the original deadline for responding to the official communication.

Ex Parte Expungement – To help eliminate “deadwood,” both third parties and the Trademark Office itself will be able to seek expungement of registrations for trademarks that were never used in commerce in connection with at least some of the goods or services recited in the registration. The window for seeking expungement opens three years after the trademark’s registration. Since conclusively proving non-use often is challenging, a third party requesting expungement must show that a “reasonable investigation” was made to determine that the trademark “has never been used in commerce.” If the request is granted, the process shifts to one between the Trademark Office and the registrant, with the registrant having to prove use or risk losing the registration as to the affected goods or services. For expungements instituted by the Trademark Office on its own initiative, the Office must at least have “information” supporting a prima facie case that the registered trademark was never used for one or more goods or services of the registration.

Ex Parte Reexamination – Similar to requests for expungement, it will be possible to ask the Trademark Office to reexamine the decision to register a trademark on the grounds that the mark wasn’t being used in commerce in connection with some or all of the goods or services of the registration. The difference between an expungement and a reexamination request is that, in the latter case, the question is whether the applicant demonstrated sufficient use during the application process before the registration was issued. In the U.S., an applicant can file a trademark application based on present use of the trademark in commerce. Alternatively, an application can be based on an intent to use the trademark in commerce (which use has to be demonstrated before the registration issues). If the requestor makes a satisfactory showing of non-use of a trademark on or before the filing date of an application based on present use or, in the case of an intent-to-use application, on or before the date the applicant filed or was required to file, evidence of commercial use, then the registration would be reexamined. Like the expungement proceedings, the process would then shift to one between the Trademark Office and the registrant, with the registrant having to show use or risk cancellation of the registration as to the affected goods or services.

In the cases of expungement and reexamination, the new law’s provisions will take effect toward the very end of 2021, by which time the Trademark Office will need to articulate implementing regulations. Since both procedures offer potentially expeditious new routes for dealing with third party registrations, the roll-out of these regulations will be worth keeping an eye on.

Presumption of Irreparable Harm – The Trademark Act is also amended — effective from the law’s enactment — to provide a presumption of irreparable harm favoring trademark infringement plaintiffs seeking injunctive relief in litigation. Following the Supreme Court’s decision in 2006 that plaintiffs had to prove irreparable harm and the necessity of injunctive relief in patent infringement cases, eBay Inc. v. MercExhange, L.L.C., 547 U.S. 388, 391 (2006), several courts have rejected the traditional presumption of entitlement to injunctive relief in trademark cases. No longer. A successful trademark infringement plaintiff now has a statutory presumption of irreparable harm to support any request to stop the losing defendant from continuing their infringing conduct. The presumption is rebuttable, meaning that the defendant can attempt to demonstrate that injunctive relief is inappropriate. But the law’s presumption means that the burden is shifted from the plaintiff to the defendant, at least for starters.

Third-Party Submissions – By the end of 2021, a formal process will be established for third parties to submit to the Trademark Office — and for the Trademark Office to act on — evidence that may have a bearing on the examination of another’s federal trademark application. This change provides the first formal opportunity to challenge another’s trademark application before it’s passed through the Trademark Office’s substantive examination and the application is poised for registration. Previously, third party objections were possible only through an informal “Letter of Protest” or following completion of the Trademark Office’s internal examination. The contours of this new evidentiary-submission process (which seems likely to supplant the “Letter of Protest”) remain to be worked out by the Trademark Office in 2021, though they must be in place within a year from the new law’s enactment.

About the Author:

Christopher Mitchell is a Member in Dickinson Wright’s Grand Rapids office. He focuses his practice on intellectual property procurement, licensing, and enforcement in the areas of consumer products, automotive products, life sciences, and medical devices. Christopher can be reached at 616-336-1058 or cmitchell@dickinsonwright.com and you can visit his bio here.