Posts Tagged: "The Trademark Modernization Act of 2020"

The U.S. Patent and Trademark Office yesterday published a final rule implementing the Trademark Modernization Act of 2020 (TMA), which was signed into law as part of the Consolidated Appropriations Act of 2020 last year. The new regulations go into effect on December 18, 2021, except for the implementation of the shorter response period for office actions, which will go into effect on December 1, 2022.

The United States Patent and Trademark Office (USPTO) yesterday issued a Notice of Proposed Rulemaking (NPRM) titled “Changes To Implement Provisions of the Trademark Modernization Act (TMA) of 2020.” The Office is seeking input on the proposal, which would revise the rules in Title 37 of the Code of Federal Regulations, parts 2 and 7, and will be holding public roundtables to explain the amendments and answer questions. Here are some of the key proposed changes.

Most people associate the Consolidated Appropriations Act of 2020 with its COVID relief and stimulus measures, rather than trademarks. While these measures are of course the primary focus of the Act, its changes to the process of registering, maintaining, and enforcing trademarks are likewise important for companies that rely on their branding to achieve their business goals. The Trademark Modernization Act, which is one of many acts included in the Consolidated Appropriations Act, makes several significant changes to the Lanham Act (aka the Trademark Act) which many trademark holders may find beneficial.

Late Monday evening, Congress passed a massive omnibus budget bill to avert a federal government shutdown and provide critical COVID-19 relief.  But that is not all – much to the surprise of the intellectual property world, the last-minute bill included several pieces of legislation, previously thought to be sidetracked in light of the current lame duck administration, that will alter the landscape of trademark, copyright and patent law as we know it. The changes include a Trademark Modernization Act that restores the rebuttable presumption of irreparable harm when a Lanham Act violation has been proven, allowing brand owners to more easily obtain injunctions, and the creation of a copyright small claims tribunal within the Copyright Office.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE) and Representatives Hank Johnson (D-GA), Doug Collins (R-GA), Martha Roby (R-AL) and Jerry Nadler (D-NY) yesterday introduced legislation to modernize the U.S. trademark system. The Trademark Modernization Act of 2020 is in part a response to the surge in fraudulent trademark filings, largely originating from China, that both the U.S. Patent and Trademark Office (USPTO) and Congress have been grappling with over the last year. Perhaps most notably, in a stated effort to better protect consumers by minimizing confusion about goods and services, the bill would restore the rebuttable presumption of irreparable harm when a trademark violation has been proven (thus clarifying eBay v. MercExchange).