January 2021

Legal Update: The Trademark Modernization Act of 2020


– by Natalie Bize
On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) was signed into law as a part of the Consolidated Appropriations Act, 2021. If you currently own a trademark, have applied for a trademark, or intend to apply for a trademark in the future, here four areas that you should be aware of which might affect the trademark rights in your brand:

1. Shortened Office Action Response Times

Under the new rules, the USPTO may assign deadlines ranging from 60 days to six months rather than the previously standard six months. Shortened response times may lead to faster registration; you should make sure your attorney knows if you would like to speed up (or slow down) prosecution when available.

2. Third Party Evidence Against Similar Marks

Third party evidence can be submitted to the USPTO against pending applications. If you become aware of another entity’s trademark application that is confusingly similar to your own mark, you should discuss submitting evidence with your attorney to try to prevent registration of a mark too similar to your own. To protect your brand, consider coordinating with your attorney to put watch notices in place so you will be notified when a similar application is filed by someone else.

3. Cancellation of Marks Not in Use

In order for a trademark to remain valid there must be continuous use of the mark in commerce. If there is an existing registration similar to your own that you have reason to believe has not consistently been used, you should discuss with your attorney whether there is the possibility of petitioning to cancel the registration.

4. Presumption of Irreparable Harm in Trademark Infringement Cases

The TMA establishes that, in trademark infringement cases, the court will presume that someone who has infringed upon your trademark has done an “irreparable” amount of harm to your business. This could make it easier for you to stop competitors from using a mark confusingly similar to your own. If you believe that a competitor is using a mark confusingly similar to your own, you should discuss all legal options with your attorney to determine whether there are any next steps you should take.

If you have trademark registrations or pending applications or if you plan to file trademark applications in the future, it is a good idea familiarize yourself with some of these changes that will soon be going into effect. Please contact our trademark team with questions.

The text of the complete TMA can be found here.