Trademark Modernization Act to Bring substantial changes to Lanham Act

Trademark Modernization Act to Bring substantial changes to Lanham Act

This Act gives the freedom to the third party to submit evidence while the examination of the Trademark application, bearing the registrability of the subject mark, is going on

The Trademark Modernization Act of 2020 (TMA) in the US brings some of the substantial changes in the Lanham Act hoping to better protect the consumer from the confusion with regards to the source of the goods and service. This also brings some substantial change with regards to the expeditious address of the fraudulent trademark filing.

For a plaintiff seeking preliminary and permanent injunctive relief, the TMA clarifies that it "shall be entitled to a rebuttable presumption of irreparable harm" upon finding of infringement or a likelihood of success on an infringement claim. According to the famous ruling of the Supreme Court in the case of eBay, Inc. v. MercExchange LLC, 547 U.S. 388 (2006), that there was no presumption of entitlement to an injunction in the patent context. This created some confusion about whether the presumption of entitlement to an injunction exists if the trademark owner proves trademark violation

15 U.S.C 1062(b) provides with the refusal of registration, amendment of application, and abandonment. The applicant shall have a period of six months in which to reply or amend his application. The new Act provides greater flexibility in setting the deadline. This act shortens the response deadline between 60 days to six months.

This Act gives the freedom to the third party to submit evidence while the examination of the Trademark application, bearing the registrability of the subject mark, is going on. Evidence with regards to the use of the mark is false or inaccurate can be submitted by the third party. Earlier there was no filing fee and therefore no specific deadline to file the same. This Act brings up the deadline of two months to review the evidence submitted by the director of USPTO while establishing the appropriate procedures for the same.

Moreover, the TMA also provides for reviewing and canceling the existing registration for the unused mark, seeing the dramatic increase in the foreign applications using fraudulent specimens and evidence of use. This move will help combat fraudulent marks.

Dealing with such a large number of applications, before applying for the registration, the applicant must show that the use of the mark in interstate commerce. The USPTO has seen a higher rate of incidence with regards to false claims. This is damaging the new market participants who want to build the brand and thereby seek protection for their mark. Previously, the proving of the fraudulently secured mark was a lengthy process, initiating the trademark cancellation proceeding. This Act provides the procedures to review and cancel registrations in an expeditious manner.

Any third person can file a petition of expungement making the non-use of the mark as the ground. The petition can be filed and the director will commence the expungement proceeding targeting registrations issued under Section 44(e) or Section 66(a) of the Lanham Act. Also, any person can file a petition to re-examine the mark again making the non-use of the mark as the ground, which will make the USPTO re-examine the mark. any person can initiate expungement or re-examination proceedings by submitting a petition to the Director of the USPTO that sets forth evidence or testimony establishing a prima facie case of non-use of a mark in commerce as of the relevant date.

The TMA hopes to bring new and more regulatory changes in the domain. Providing more room to the trademark owner for challenging registration and also amending with the circuit split for making it easier for the court to prove irreparable harm, is a welcome move by TMA.