As part of the December 2020 COVID-19 relief bill/appropriations act, Congress made significant changes to the law governing trademarks. The new provisions are scheduled to go into effect by December 27, 2021, so the United States Patent and Trademark Office is rushing to implement all the changes. The Lomnitzer Law team is monitoring all the changes, and providing comments to the USPTO on behalf of our clients here in South Florida and around the world.
The Biggest Changes To Trademark Law Since The 1980s
The Trademark Modernization Act of 2020 (TMA) is the biggest change to our nation’s trademark laws since the 1980s. It is a long-overdue overhaul designed to make the trademark register more business-friendly.
Cleaning Up The Register
There are over 2.4 million marks registered with the USPTO. Each mark reflects goods or services available in commerce, but far too often registered marks are overly broad, or not being used as intended. The inclusion of these marks on the trademark register prevents new businesses and creators from securing appropriate marks for their new goods and services.
The new law should make it faster and simpler for business owners and creators to prevent inappropriate marks from being registered and get unused marks removed from the register.
First, the TMA codifies the USPTO’s longstanding practice of allowing third parties to submit a “Letter of Protest” to the USPTO in opposition to another party’s attempt to register a mark. The TMA gives the USPTO two months to act on a letter and requires objectors to pay a filing fee.
If a mark is already on the register, the TMA provides two new ways to cancel it.
- Expungement – If a trademark was never used in commerce, anyone can request that it be removed from the register within three to ten years of its registration date.
- Reexamination – Within the first five years after a trademark is registered, anyone can object to its inclusion on the register if it was not used in commerce by a certain date. The USPTO says a reexamination is more appropriate than an expungement if it appears that an application showing a use in commerce was falsified or exaggerated.
The TMA also updates the process for bringing a cancellation proceeding to the Trademark Trial and Appeal Board (TTAB). While similar to the expungement action described above, it can be done at any time after the three-year anniversary of the mark’s registration.
Finally, the TMA empowers the Director of the USPTO to periodically audit and clean up the register. Giving the USPTO this power is a positive development, but the Lomnitzer Law team still recommends business owners and creators take action to protect themselves instead of relying on the government to act of its own volition.
Powerful Representation For Your Creation
The Lomnitzer Law team is working hard to ensure that as these and other provisions of the Trademark Modernization Act are implemented the USPTO takes into consideration the real world impact of their actions. The agency is taking comments on its actions, and we are speaking up on behalf of our clients here in South Florida and around the world. If you have questions or concerns about the TMA, we are here for you.
If you have been blocked from trademarking a good or service, and you want to take action to get the mark that is thwarting your mark actually removed from the register, we can help you take advantage of the TMA’s new procedures. The attorneys on the Lomnitzer Law team aggressively promote and defend our clients’ creations.
You can rely on our experienced attorneys to advise and counsel you on IP issues so you can create and/or run your business. Contact us today to schedule an initial consultation.