On December 18, 2021, regulations implementing the Trademark Modernization Act of 2020 (TMA) went into effect. The TMA made some significant changes to federal trademark law. These included adding new measures that can be used to challenge potentially inaccurate trademark claims. If you have not heard of the TMA or its changes, you may be wondering: What is the Trademark Modernization Act of 2020?
The Trademark Modernization Act of 2020
On December 27, 2020, the Trademark Modernization Act of 2020 (TMA) was enacted as part of the coronavirus relief bill. The new law made changes to federal trademark law geared towards improving the trademark register.
Petitions for Expungement, Reexamination, and Cancellation
Millions of trademarks are registered with the United States Patent and Trademark Office (USPTO). Unfortunately, some of these registered trademarks are not being used as intended or are overly broad. This may prevent new businesses and creators from getting appropriate and applicable trademarks for their goods and services.
The TMA allows a challenging party to file a petition to expunge an erroneous trademark registration. They can do this when they believe that trademark has never been used in connection with its identified goods and services.
Expungement
- To initiate an expungement challenge, the petitioning party must submit evidence of non-use to the USPTO,. The USPTO will then determine whether the trademark registration should be canceled.
- These petitions can be filed anytime between the third and tenth anniversary of the trademark’s registration date.
- For the first three years of the program, expungement petitions can be filed on those registrations more than 10 years old.
- The USPTO director can also initiate expungement without a petition.
Reexamination
Similarly, the TMA also permits reexamination of a registration on the basis that a trademark wasn’t used in the course of commerce in connection with all or some of the goods and services listed on the registration certificate.
- Just as when a party files for expungement, one petitioning for reexamination is required to conduct a non-use investigation and present evidence of it to the USPTO.
- If the trademark is not used in commerce by a specific date, a petition can be filed challenging its inclusion on the registry.
Cancellation
A petitioner can also file for cancellation at any time after the third anniversary of a registration date on the grounds that the registered mark wasn’t used in the course of commerce in connection with some or all of the goods and services listed on the registration certificate.
While a petition to cancel a registration is similar to one seeking to expunge or reexamine, there is a significant difference. Unlike expungement and reexamination, a cancellation petition will involve proceedings before the Trademark Trial and Appeal Board.
Response Time Changes, Letters of Protest, and Irreparable Harm
These tools are intended to help clean up the registry. The also TMA permits USPTO examiners to shorten the response deadline for application comments to less than six months. Applicants can ask to extend the deadline back to six months if necessary. The new law has also formalized its “letter of protest” practice. Lastly, the TMA has established a statutory presumption for irreparable harm when a plaintiff can successfully show that there has been trademark infringement in a case seeking injunctive relief.
Trademark issues can be complex. Therefore, if you have a trademark matter, it’s crucial that you work with an experienced Florida business attorney. Your business lawyer can help you navigate the trademark process and assess any other related issues.
Contact an Experienced Florida Business Attorney
Attorney Richard Sierra at the Florida Small Business Center assists clients like you with business and litigation matters. As always, Our Goal Is to Help You Succeed™. For an appointment, you may call us at 1-866-842-5202 or use the contact form on our website. We represent clients throughout the State of Florida, including Coral Springs, Coconut Creek, Boca Raton, Delray Beach, Pompano Beach, Sunrise, Fort Lauderdale, Miami, West Palm Beach, Jupiter, Deerfield Beach, Stuart, Port St. Lucie, Orlando, Naples, Fort Myers, Sarasota, Tampa, and surrounding communities.