Many of our clients may not know that the recent stimulus bill known as the Consolidated Appropriations Act of 2021 (the “Act”) includes new trademark legislation that will have a sweeping impact on trademark owners. Specifically, the Act incorporates the Trademark Modernization Act of 2020 (“TMA”), which includes many substantive changes to the Lanham (Trademark) Act aimed at modernizing trademark law. The bill was passed by Congress on December 21, 2021 and was signed into law December 27, 2020. A brief description of the key changes are as follows:
Discretionary Response Times
Under prior law, the Office Action response time was 6 months. The TMA now allows the United States Patent and Trademark Office (“USPTO”) flexibility in setting response times to office actions, including the ability to shorten the response periods to between 60 days and 6 months, provided that the applicant can obtain extensions to reply or amend aggregating up to 6 months. This could affect the decision and manner in which clients determine how to respond to office actions.
Third-Party Submissions of Evidence (Letter of Protest Procedure)
The TMA also formalizes the Letter of Protest procedure for third parties to submit evidence in opposition to a trademark application during the examiner’s examination process and requires the USPTO Director to determine within 2 months whether the evidence should be included in the record. This empowers opposers to fight for their rights earlier on in the trademark process and challenge marks that have yet to reach publication.
Expungement of a Trademark Registration
To clean up the Principal Register of unused marks, the TMA added two new cancellation procedures to the Lanham Act. These changes are a response to the dramatic increase in applications filed by foreign applicants using fraudulent information such as false evidence of use of the applied-for mark in U.S. commerce. Previously, a third party could only request cancellation of a trademark registration through an inter partes procedure before the Trademark Trial and Appeals Board (“TTAB”) or by filing an action in the US district court. Now, anyone may file a petition with the USPTO to request that the USPTO Director institute a proceeding to expunge a trademark that has never been used in commerce. This petition must be filed between the third and 10th anniversaries of the registration date. Second, anyone may file a petition requesting a reexamination of a registration to remove some or all of the goods or services in the registration on the basis that the trademark was not used in commerce on or before the time the trademark owner declared to the USPTO that it was used in commerce. Either petition can be submitted directly to the USPTO Director with evidence of a “reasonable investigation.” If successful, the Director will take appropriate action against the challenged mark.
The new processes make the cancellation and challenge of unused or abandoned marks more efficient and less costly.
Injunctive Relief
The TMA reaffirms a rebuttable presumption of irreparable harm in trademark infringement litigation where injunctive relief is sought, making it easier for trademark owners to obtain such relief. Typically, trademark owners will seek injunctive relief in trademark infringement cases to stop an infringer. To obtain injunctive relief, the trademark owner must show that it will be irreparably harmed if the injunction is not entered. Under the new law, if the trademark owner can show likelihood of confusion, there will be a statutory rebuttable presumption of irreparable harm in favor of the trademark owner. This change settles a circuit split on this issue.
Greater Director Authority
The TMA increases the USPTO Director’s power over TTAB administrative judges, by giving the Director the authority to reconsider, and modify or set aside, a decision of the TTAB.
Scherer Smith & Kenny LLP is available to address any questions you may have related to these trademark changes and how they may impact you. For additional information, please contact Heather G. Sapp at hgs@sfcounsel.com.