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What is the Trademark Modernization Act?

On Behalf of | Oct 6, 2021 | Firm News

The Trademark Modernization Act of 2020 (TMA) includes initiatives that improve the integrity of the federal trademark register, as well as addressing the judicial processing of copyright infringement cases. This legislation helps U.S. businesses to be able to make informed branding decisions during the registration of trademarks.

New procedures challenging trademark applications and registrations on non-use grounds will help to fight the practice of fraudulent or inaccurate claims of use, giving trademark owners relief when combatting that fraud.

What role does the presumption of irreparable harm have?

The TMA establishes once more the theory of presumption of irreparable harm when a trademark owner’s brand is impinged, requiring them to seek injunctive relief. The TMA amends Section 34 of the Lanham Act (15 U.S.C. 1116) by adding a rebuttal presumption of irreparable harm if there is a finding of infringement, which is then more likely to allow a preliminary injunction to halt trademark infringements.

What are the procedures for challenging existing registrations?

 The TMA amends the Lanham Act by adding two sections allowing trademark owners to challenge registrations on the grounds of non-use:

  • Section 16A allows a third party to file a petition for expungement of a trademark registration on grounds of non-use within three years of issuance.
  • Section 16B permits third parties to file a petition for reexamination of a registration on grounds that the trademark was not in use in U.S. commerce before the registration date. Filing must take place within five years of the issue of registration.

The petitioner must file either claim with the USPTO Director and include a verified statement of there was a reasonable investigation of the trademark’s non-use in commerce.

For business owners in New York and elsewhere, the business’s trademark reflects the brand, goods, services, connections to clients, and in short, everything associated with their reputation. Protecting trademark rights is crucial, and finding ways to enforce your brand can also reduce the risk of litigation.