Modernizing Trademarks – Now in effect
US Patent and Trademark Office
The Trademark Modernization Act (TMA) is in effect as of December 18, 2021. Let’s look at two basic issues it addresses.
First, there are only so many words. And only some of those make good trademarks or service marks. When words are registered as trademarks or service marks for certain classes of goods or services, they are no longer available for others to use as marks for those goods or services. Quite a few words are tied up as registered marks, but aren’t being used.
Second, trademark owners have had a harder time getting injunctions against trademark infringement after a 2006 Supreme Court case.
Here is how the TMA deals with these issues.
Clearing the decks with re-examination
Let’s start with how the TMA addresses the first issue: too many registered but unused marks.
Assume you want to register a trademark. You think it is perfect for your new product. But you find someone else registered it first and included goods or service for which you want to use the mark. You do a fair amount of research and find the registering party hasn’t used the mark for goods or services.
Based on that registration, you may just give up and use a different mark. You know the registration would block yours, and it would be difficult and expensive to challenge it. But after the TMA, you may not just give up.
If the registered mark you are concerned about was registered based on use, you can now challenge it as not being used in commerce with the claimed goods or services on the date it was filed. To do that, you file a petition and prove that a reasonable investigation shows the mark has not been used for all or any of the goods or services. If the Director finds reasonable ground to believe there was no use with the claimed goods or services, she will issue an office action requiring the party with the registration to prove use. If they don’t, the mark can be cancelled as to some or all of the claimed goods or services. The registering party can also concede it has not used the mark on some goods and services and cancel the registration for those voluntarily.
Things are a little different if the registered mark was filed based on an “intent to use.” The registering party gets some time to use the mark as they said they intended to do. But you can still get it out of the way at some point if it has not actually been used. You have to wait to file a petition for re-examination by the later of (1) the time an amendment to allege use was filed, or (2) the deadline to file a statement of use expired. Again, upon finding non-use, the director can cancel the registration entirely or as to those goods or services for which the mark was not used.
Clearing the decks with expungement
Let’s say a foreign registering party’s mark is in the way of registering the mark you want to register. Foreign registering parties don’t have to prove use to register a mark. But with the TMA, you now have a relatively quick and inexpensive way to get the blocking mark out of the way if it hasn’t been used.
You can petition for expungement of a mark, again by showing non-use, between three and ten years after the other mark’s registration date. Until December 27, 2023, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit. If the Director finds non-use for some or all of the claimed goods or services, it can cancel the registration for some or all of the goods for non-use.
Get ready to prove use
Re-examination and expungement provide relatively quick and inexpensive ways to keep unused marks from clogging up the registration system. But the TMA also has implications for owners of registered marks.
You may be on the receiving end of a petition for re-examination or expungement. If so, you will want to have ready access to proof of using the mark for the goods and services you have registered. You will also want to be extra careful not to claim use for goods or services which with you haven’t used the mark. This will help avoid challenges. Of course, you should always be careful about the uses you claim anyway.
Irreparable harm presumed (again)
Now let’s look at how the TMA deals with the second issue: the difficulty of getting an injunction in a trademark case.
Assume a competitor is infringing your trademark. You sued for trademark infringement and won. You now want to make sure they stop infringing. So, you seek a permanent injunction against the competitor using the mark. At one time, in many courts the injunction would have been virtually automatic.
Then along came eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006). eBay was a patent case, but its reasoning applies to other cases seeking injunctions infringing intellectual property. The Court decided that, as for any injunction, the party seeking the injunction would have to prove continuing use of the mark would cause irreparable harm. Many courts used to assume infringing a trademark caused irreparable harm, making an injunction almost automatic after a finding of infringement. But after eBay that assumption may not be a good one.
Courts also used to assume irreparable harm in the context of a preliminary injunction if the trademark owner showed it was likely to win on its claim of infringement. But after eBay, such an assumption appears unwarranted.
The TMA changed things back closer to the way they used to be. It amended section 34(a) of the Lanham Act, 15 U.S.C. § 1116(a), to provide “a rebuttable presumption of irreparable harm” upon a finding of infringement. This presumption also applies if the court finds likelihood of success on the merits of an infringement claim when considering a motion for a preliminary injunction or temporary restraining order. So now courts will again presume irreparable harm based on a finding of there was infringement or a finding of infringement is likely. The accused infringer will somehow have to show there is no likelihood of irreparable harm to avoid the injunction.
That will make life a little easier for trademark owners and harder for accused infringers.