Image from Getty Images
The recently passed Trademark Modernization Act (TMA) will allow for new avenues in which interested third-party trademark applicants can participate in application and registration reviews done by the United State Patent and Trademark Office (USPTO). TMA was proposed in response to the recent surge in fraudulent trademark filings and is intended to provide ways in which to combat these fraudulent trademark filings.
One notable result of the TMA is restoring the presumption that a trademark owner will suffer irreparable harm once a trademark is infringed. Prior to this, the circuit courts were split on the issue after the Supreme Court ruled in eBay v. MercExchange case, which eliminated the presumption in certain cases. Now, this amendment to the Lanham Act resolves the issue by codifying that a trademark owner seeking injunction is entitled to a rebuttable presumption when they establish a likelihood of liability in the temporary restraining order stage.
The TMA also codifies a method in which applications are protested through “Letters of Protest,” which are submitted by third-parties claiming that a trademark application should be refused registration due to anticipated injury to the third-parties’ interests with evidence supporting their claim. This differs from a “Notice of Opposition” which takes place after the USPTO examiner has reviewed and approved the trademark application for publication, as opposed to a Letter of Protest, which is during the application process before the USPTO examiner has approved the trademark application for publication . The Letter of Protest also provides a cheaper and easier alternative than the Notice of Opposition.
Additionally, the legislation would address the issue of applicants providing doctored photos, in order to obtain fraudulent trademarks. TMA will allow applications to use two different trademark challenging measures: expungement and re-examination. A third- party may conduct an investigation and if they are able to provide proof that a registrant has not used their mark in commerce, then the USPTO will remove their mark via an expungement proceeding. Alternatively, re-examination requires that the third- party only show that the registered mark was not being used before the claimed date of use.
By providing new methods to fight against fraudulent trademarks, the TMA addresses many issues that will better protect trademark owners. Additionally, it provides clarity for courts and litigants in regard to the showing of irreparable harm required to support a request for injunctive relief, which will result in a reduction of forum shopping.
Article by Mandie Capozzelli
Sources:
https://www.uspto.gov/trademarks/laws/2020-modernization-act
https://www.jdsupra.com/legalnews/the-trademark-modernization-act-1968030/