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Amendments to Trademark Laws

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Jan 28, 2021 (Newsletter Issue 2/21)
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Trademark Modernization Act Signed

On December 27, 2020, the Trademark Modernization Act of 2020 (TMA) was signed making several changes to the Lanham Act. The TMA provides new procedures to challenge applications and registrations with inaccurate claims of use. It will be implemented by December 27, 2021.

Major changes are the following:

-Two new ex parte post-registration proceedings to cancel unused trademarks
The TMA introduces the Expungement proceeding, which provides that any party may petition the USPTO to expunge a registration for a trademark that has never been used in commerce. This new procedure must be brought between three to ten years after the registration date.
Further, the TMA implements the Re-examination proceeding, which provides that any party may petition the USPTO to re-examine any registration on the grounds of non-use as of the date of the registrant’s declaration under oath that the mark is in use for up to five years from the date of such declaration.

- New ground for cancellation proceeding
The TMA provides a new ground which is substantively equivalent to the expungement claim that a registered trademark has never been used in commerce, as described above, but may be brought at any time following three years from registration.

- Flexible response periods for office actions
The TMA enables the USPTO to shorten Office Action response deadlines from the current six-month period to a time period ranging from 60 days to six months. The applicant may request extensions to have the full six months. The Director may set the number, length and fee for extensions of time by rule.

- Third-party submissions during examination (Letters of Protest)
The TMA provides statutory authority for the longstanding USPTO Letter of Protest practice that allows third parties to submit evidence to the USPTO, prior to registration, regarding a trademark’s registrability. The TMA sets a two-month deadline for the USPTO to act on these submissions and authorizes the Office to charge a fee for them. The TMA also provides that the USPTO's decision on whether to include the evidence in the application record is final and non-reviewable.

- Creating a uniform rule establishing a rebuttable presumption of irreparable harm
The TMA also provides that 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. This uniform rule will help trademark owners enforce their rights against infringers in federal court. No rulemaking is necessary to give effect to this provision.

The USPTO has created an informational webpage on the TMA, identifying key provisions, and an email box to ask questions and provide feedback. The webpage will be updated as additional information becomes available. To enter the website, please here