New Trademark Modernization Act Provides New Tools to Combat Trademark Fraud

On December 27, 2020, the Trademark Modernization Act of 2020 (the “Act”) was signed into law as part of the coronavirus relief bill. This Act effectively amends the Trademark Lanham Act in several ways, but perhaps most importantly, provides significant new tools for trademark owners’ combating trademark fraud. The new Act makes is easier for trademark owners to obtain injunctive relief and provides new ways for challenging trademark applications and registrations on non-use grounds.  New procedures are intended to provide legitimate trademark holders new ways to combat fraudulent trademark applications and registrations. Changes brought forth by the new Act are described in more detail below.

First, the Act clarifies that irreparable harm can be presumed in requests for injunctive relief upon a finding of trademark infringement. Prior to the Act, there was a split among appellate courts on this issue, with may courts ruling that the presumption was no longer valid. The Lanham Act now includes a rebuttable presumption of irreparable harm upon a finding of infringement, or of likely success on the merits in a preliminary injunction. The Act therefore restores important protection for trademark owners seeking to stop infringement on their mark. 

Second, the Act sets forth new protest procedures at the USPTO by providing the ability for third-parties to file evidence during review of a pending trademark application before it is published for opposition. This effectively provides trademark owners an opportunity to educate the examining attorney at the USPTO about why a pending trademark application conflicts with prior rights in an informal and non-contentious way. This was previously not something available to trademark owners. Procedures for this will be forthcoming in the next year. 

The Act also provides new examination procedures to help combat fake or fraudulent applications. Specifically, the Act amends the Lanham Act by adding Sections 16A and 16B to provide two new ways for trademark owners to challenge existing trademark applications on the grounds of non-use. First, a trademark owner can file a petition for expungement of a trademark registration on the grounds that the applicant never used the mark, or a third-party can file a petition for reexamination of a registration on the grounds that a mark was not used in the United States prior to registration, as required. 

Last, the Act amends the Lanham act to add non-use as grounds to cancel a trademark registration. This is yet another tool to combat false assertions of use in applications or statements of use. 

The main takeaways for trademark owners is that they now have new tools at their disposal to address fraudulent trademark applications, and will have a reduced evidentiary burden in obtaining an injunction against an infringing mark. If you’re a trademark owner and need help combating trademark infringement or fraud, please call SK&S trademark attorney Christina Saunders at 303-396-0270 or email at christina@saunders-saunders.com.