New Tools for Removing Deadwood from the Register

The Trademark Modernization Act of 2020 (TMA) creates new tools for trademark owners to remove conflicting third-party applications and registrations from the USPTO database on the grounds that those marks have either never been used in commerce or have not been used in commerce on or before a claimed date. These new tools, which comprise a new ground for a Trademark Trial and Appeal Board (TTAB) cancellation proceeding, and two petitions to the Director of the USPTO – one for expungement and another for re-examination, aim to permit businesses to more easily expand the scope of available trademarks for their emerging brands.

Flexible Response Periods for Office Actions

The TMA also speeds up the prosecution process for applicants facing refusals or requirements issued by an examining attorney by creating flexible, but possibly shorter response periods for Office actions. Before the enactment of the new legislation, applicants whose marks were refused registration based on substantive or procedural grounds, had a fixed period of six months to submit written arguments or clarifications in their favor. Now, with flexible periods of at least 60 days, but shorter than six months, applicants can expect a more prompt review of their filings and avail themselves of shorter application processing timelines overall.

Letters of Protest

Additionally, the TMA creates statutory authority for trademark owners who monitor the influx of new applications at the USPTO to submit letters of protest during ex-parte examination to prevent registration of third-party marks allegedly causing likelihood of confusion with their marks, using a descriptive term, or engaging in misappropriation. Letters of protest, thus, provide an effective and cost-efficient way for trademark owners to exercise due diligence over their trademark rights, and sometimes even substitute for pursuing lengthy and expensive Board proceedings altogether.

Rebuttable Presumption of Irreparable Harm in Infringement Cases

Finally, the TMA creates a rebuttable presumption of irreparable harm upon a finding of infringement or likelihood of success on the merits in federal court cases filed by trademark owners seeking injunctive relief for trademark infringement. In this way, the TMA makes it easier for trademark owners to stop infringers in the marketplace and also more likely that they seek to enforce their rights at the outset.