For our weekly SoCal IP Institute meeting on Monday, May 24, 2021, 1:00 pm PT, Michael Harris will lead a discussion of the Trademark Modernization Act.

The Trademark Modernization Act of 2020 (TMA) (tm modernization act) is now law, but it needs PTO rules before TMA will become effective. The proposed rules are at TMA Rules. They are not yet final.

Purpose of Act: One purpose of the act is to counter the problem of finding available trademarks. The existence of Amazon Brand Registry, Madrid Convention and Chinese government incentives increased the number of trademark filings, but many applications list goods or services that will not be used.

Expungement and Reexamination: TMA has two procedures for challenging registrations for non-use: expungement and reexamination. Expunging (Lanham Act § 16A) is used when one suspects a registered mark was never used for at least one good or service. It must be brought between the third and tenth-year anniversary of the registration.

A challenger initiates reexamination (Lanham Act § 16B) when the applicant declared the mark was in use, i.e., upon filing a use-based application or a statement of use. It must be brought by the fifth anniversary of the registration. If that deadline is missed, the challenger still can file a regular cancellation action.

After a challenger files for expungement or reexamination, the Commissioner then rules whether it will proceed. The registrant then puts on evidence of use. If the registrant succeeds, no other party can file for expungement or reexamination. A cancellation still could be filed.

These proceedings make keeping applicants’ evidence of use critical. We should highlight saving evidence even stronger to our clients.

Shortened Time to Respond to Office Actions: The TMA also provides the PTO can require an applicant to respond to office actions in less than six months. Like the patent side of the office, extensions should be available for a fee.

Third-Party Protests: Third parties also can submit evidence on any ground during examination. See Lanham Act § 1(f).

Presumption of Irreparable Harm: In eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), the Supreme Court held courts should not presume an injunction is proper after an infringement holding. A prevailing plaintiff must show all factors: (1) t injury; (2) inadequate remedies at law; (3) th balance of hardships; and (4) public interest. Courts have extended eBay to copyright cases, but there is a slit of authority whether it extends to trademark cases. Under the TMA, irreparable harm is presumed, and infringers will have to prove lack of irreparable harm.

Please join the discussion by video conference.  Email elisham @ (remove the spaces which were added to to avoid spammers) to RSVP. This activity is approved for 1 hour of California MCLE credit.