By Stephen D. Wilson 

On December 27, 2020, the U.S. Trademark Modernization Act of 2020 (TMA) (also known as the TM Act of 2020) [“TMA”] became law. The TMA was included in the Consolidated Appropriations Act, 2021 (also known as the COVID-19 relief and spending bill).

The TMA amends the Trademark Act of 1946 (also known as the Lanham Act) in several ways. The amendments seek to accelerate the trademark application examination process, combat fraudulent trademark filings, cancel “deadwood” registrations for marks that are not used in commerce, add new procedures to challenge trademark applications and registrations, declutter the U.S. Trademark Register, and make it easier for trademark owners to obtain injunctions against infringers.

The TMA provisions include the following:

  • Shorter Deadlines: The TMA provides flexibility for the United States Patent and Trademark Office (USPTO) to shorten deadlines for applicants to file responses or amend applications from 6 months to potentially as little as 60 days.
  • Letters of Protest: The TMA formalizes a procedure for third parties to submit Letters of Protest and evidence to the USPTO in opposition to trademark applications effective December 27, 2021 (although the USPTO recently codified the Letter of Protest procedure in its regulations effective January 2, 2021).
  • Post-Registration Procedures: The TMA establishes two new ex parte procedures to challenge trademark registrations with the USPTO effective December 27, 2021:
  1. Expungement Proceedings to challenge registrations on the basis that the mark has never been used in commerce with some or all specified goods or services; and
  2. Reexamination Proceedings to challenge registrations on the basis that the mark was not in use in commerce with some or all specified goods or services on or before: (a) the filing date of an application based on use in commerce; (b) the filing date of an amendment to allege use; or (c) expiration of the deadline to file a statement of use (including approved extensions).
  • Cancellation for Non-Use: The TMA adds non-use as a ground for cancellation any time after the three-year period following the registration date on the basis that the mark was never used in commerce for some or all specified goods or services.
  • Injunctions: The TMA restores the rebuttable presumption that a trademark owner suffers irreparable harm when a trademark is infringed, which is a requirement for injunctions. (Federal courts had applied the presumption for decades, but were divided after a 2006 Supreme Court opinion in a patent case, which created uncertainty.)
  • Trademark Trial and Appeal Board (TTAB): The TMA grants the Director of the USPTO more power over TTAB administrative law judges, with authority to reconsider, modify, or set aside decisions of the TTAB.

The TMA provides trademark owners with new brand protection options, but may also open the door for competitors to challenge their trademark applications and registrations. Trademarks are typically among the most valuable assets of a business, and should be protected with the assistance of experienced intellectual property counsel to minimize the risk of third-party attacks under the TMA and audits by the USPTO.

The Beggs & Lane Intellectual Property Group assists clients worldwide with U.S. and international trademark protection and other intellectual property (IP) matters.