Peter S. Sloane
Partner, Chair of Trademark and Copyright Practice Group
Sarah Sue Landau
Associate, Leason Ellis LLP
On December 27, 2020, the Trademark Modernization Act (TMA) was signed into law as part of a COVID-19 omnibus appropriations bill (H.R. 6196). The TMA seeks to improve the accuracy and integrity of the Federal Trademark Register by making significant changes to the way in which registrations may be cancelled and by formally recognizing certain registration procedures.
What does the TMA do?
What does the TMA mean for brand protection professionals?
The new procedures for expungement and reexamination are arguably the most innovative parts of the TMA and potentially the most effective new tool for brand protection professionals. The fact that trademark registrations can be obtained by foreign applicants based upon the Paris Convention and the Madrid Protocol, without the need to prove use of the mark in U.S. commerce, has long increased the amount of deadwood on the Federal Register. The problem has recently been compounded by applicants, particularly from China, who file use-based applications with illegitimate specimens in order to more quickly obtain registration for submission to the Amazon Brand Registry, and to benefit from financial incentives provided by the Chinese government to locals who obtain foreign trademark registrations.
A Trademark Register crowded with registrations of marks not actually in use in the U.S. marketplace makes it exceedingly difficult for brand protection professionals to clear new brands for use and registration. With expungement and reexamination proceedings coming by year end, brand protection professionals will have more options for testing the validity of obstacles and clearing a pathway to registration. Additionally, the availability of quicker and less expensive ex parte proceedings should help to reduce the backlog of cases at the TTAB, which should speed up trial of more traditional inter partes cases. At the same time, legitimate brand owners will need to step up their game to respond to Office Actions with shorter deadlines. They will also need to make sure that their marks are in fact commercialized when claiming use and to avoid over-applying for goods and services they do not actually intend to offer. Maintaining a record of actual use information and plans to use the mark could prove handy in the event of expungement or reexamination proceedings.
For more information, read: USPTO, 2020.
THE BRAND PROTECTION PROFESSIONAL | MARCH 2021 | VOLUME 6 NUMBER 1
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