Thursday, December 31, 2020

The Trademark Modernization Act of 2020 ("TMA") Provides Significant Benefits to Trademark Owners

Here is a Trademark Alert Published by Wolf Greenfield regarding the Trademark Modernization Act of 2020 ("TMA") and the upcoming trademark fee changes.

The Trademark Modernization Act of 2020 (“TMA”) — signed into law by President Trump on December 27, 2020 as part of the COVID-19 relief and government funding package — provides trademark owners with several significant benefits. The legislation makes it easier for a trademark owner to obtain injunctive relief against an infringer. Courts have required that, to obtain an injunction against an infringer, the trademark owner must prove that it will be “irreparably harmed” if the infringer is not enjoined from further use of the infringing mark. The TMA provides that a trademark owner who proves infringement will enjoy a legal presumption that the harm caused by continued infringement will be irreparable, thereby increasing the owner’s likelihood of obtaining injunctive relief. 

Due to rising concern regarding the proliferation of applications and registrations (particularly emanating from China) for trademarks that are not actually in use in United States commerce, the TMA also calls for the United States Patent and Trademark Office (“USPTO”) to implement new procedures that will allow third parties to more readily challenge pending applications and issued registrations that may be spurious. Under current practice, challenges to pending applications are limited in scope, and challenges to registrations require costly cancellation proceedings. The TMA calls for a broadening of the scope of evidence that a third-party may submit for consideration during examination of a pending application (including evidence of non-use), and a streamlined procedure for challenging issued registrations. These changes will help clear the way for legitimate trademark users to obtain registration of their marks. 

Along the same lines, the TMA requires the Government Accountability Office to conduct a study regarding the problem of false and inaccurate claims of use in trademark applications and registrations, and to report to Congress recommendations based on the results of the study as to any changes to trademark law that will improve the accuracy of the Trademark Register or reduce inaccurate or false claims of use. 

In addition to the changes effected by the TMA, the USPTO will implement new and increased fees as of January 2, 2021, including the fee for filing a trademark application, for filing an appeal from a final refusal by the USPTO, and the fees for filing a notice of opposition or petition for cancellation. Fees for filing an appeal brief and for requesting oral argument in an opposition or cancellation proceeding are newly added. In keeping with the focus on clearing the Trademark Register of so-called “deadwood,” the USPTO will charge a fee to a registrant who seeks to maintain or renew a registration and then requests that goods or services be removed from the registration due to non-use.

Read comments and post your comment here.

Text Copyright Wolf Greenfield 2020.


At 4:17 PM, Anonymous Curt Krechevsky said...

Another aspect that merits further USPTO scrutiny is whether foreign applicants, particularly from China, are making an end-run on the requirement to use a U.S.-licensed practitioner. I've seen some email addresses and address blocks identifying a purported U.S. practitioner that appear unusual, to say the least, for what a U.S. attorney would typically use.

At 3:47 PM, Anonymous Anonymous said...

The number of filings from Chinese based filers are staggering. I found maybe 129,000 filings in 2020. That equates to about $29 million in fees to USPTO?

More interesting is that only small number of US attorneys filed about half these filings. For one attorney, I counted as many as 50 filings in a day, about one filing every 10 minutes? Are they using special software to fill in the teas forms and make it easier to speed up the filings?

For TTAB cases related to these same attorneys, there are a lot of defaults, but when they answer it looks like the cases can become like a Leo Stoller nightmare. Will we be having to oppose lots of "scam" ITU applications in record numbers with 50% higher TTAB fees?

Welcome to 2021.

At 4:34 PM, Anonymous Tom Wilentz said...

I have actually been contacted by overseas firms asking to use me to "sign" their already drafted office action responses and other filings, and to use my U.S. attorney address. I politely explained that I could not oblige, since this is not what the USPTO rules intend by requiring "representation" by a U.S. attorney.
If I have been approached with these kinds of inquiries, you can be sure there are many out there figuring ways around the U.S. attorney requirement.

At 5:41 AM, Anonymous Trademark product categories said...

"The Trademark Modernization Act of 2020 would restore a little-known practice that has been with us for over 40 years," said U.S. President Donald Trump in announcing the bill last week, without offering any details on what he meant by "new rules."


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