By: Vivek Vaidya
After years of fraudulent trademarks stacking up in the United States Patent and Trademark Office (USPTO) database, major reform is under way. The Trademark Modernization Act will go into effect in December of 2021 to provide new tools for applicants to overcome certain refusals to their trademark applications.
Specifically, the new processes will focus on challenging trademark applications and registrations that contain inaccurate use claims. The hope is that business owners in the U.S. will make smarter and more honest branding decisions for their products and services.
The TMA will set forth the following new procedures:
Two new post-registration proceedings can be filed with the USPTO Director Institute, in order to request the cancellation of unused trademarks.
1) Expungement: one may request the removal of specific goods/services in a trademark registration because the registrant never used the trademark in US commerce.
2) Reexamination: one may request the removal of specific goods/services by arguing that the trademark was not in use by a particular date as alleged by the registrant, usually by showing the specimen showing the trademark in use was not accurate.
After initiating either of these proceedings, the registrant will have an opportunity to respond with evidence that the information in their trademark registration is accurate.
Changes to the Letter of Protest Procedure.
The TMA codifies the Letter of Protest process, which has been long standing but seldom used. A Letter of Protest allows third parties to submit evidence prior to an application’s registration that challenges its eligibility to be registered.
Changes to the process and rules around seeking injunctive relief.
As per the TMA, a trademark owner who is seeking injunctive relief (a fancy term for getting someone to stop doing something) is entitled to an arguable presumption of irreparable harm upon a finding of infringement based upon the facts of the case. This rule will help trademark owners enforce their rights against infringers in federal court.
The TMA provides trademark applicants with new tools to challenge trademark registrations that are blocking against their applications. Instead of costly and lengthy Opposition and Cancellation Proceedings, the expungement, reexamination and Letter of Protest procedures will make it easier and more efficient for rightful trademark owners to establish their rights through registration with the USPTO.
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