Trademark Modernization Act Becomes Law, Easing the Burden of Trademark Owners to Obtain Injunctive Relief and Curbing Trademark Registrations That Falsely Claim Use of a Mark
As part of the recent COVID-19 relief and government funding bill (“the Consolidated Appropriations Act”), Congress introduced significant changes to U.S. trademark law. The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The Act intends to curb trademark registrations that falsely claim use of a mark, addresses the false-use-claim problem by creating new procedures to improve examination effectiveness and efficiency, and promotes remedies designed to protect consumers in trademark cases. The TMA, which becomes effective one year after the date of its enactment, amends the Lanham Act by changing certain procedures in trademark prosecution before the United States Patent and Trademark Office (USPTO), providing new avenues for canceling fraudulent registrations, and clarifying the standard for obtaining injunctive relief in trademark litigation. The key takeaways from the Act are discussed below. Third-Party Submission of Evidence of Non-Use: Section 3 of the Act provides for third-party submission of evidence during examination of an application for federal registration of a trademark. In particular, codifying the practice of Letters of Protest, Section 3(a) allows third parties to submit to the USPTO certain evidence relevant to the examination of a trademark application for consideration in deciding whether a trademark registration should be issued. Relevant evidence can relate to any ground on which an examiner...