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New trademark law goes into effect this year

| Jan 11, 2021 | Trademarks |

Everyone knows that the budget bill passed at the end of last year, called the Consolidated Appropriations Act, 2021, H.R. 133. It was signed into law on Dec. 27. Among its many provisions were the Trademark Modernization Act of 2020.

Trademark Modernization Act of 2020

While the TMA was signed into law last year, it does not go into effect until Dec. 27 of this year. The TMA created three new procedures for challenging trademark applications or registrations.

Letter of Protest

Anyone can file a protest against a pending application with a letter to the Director of the U.S. Patent and Trademark Office, but it must include evidence that would be grounds for refusal of the application. This is important because it means that businesses should employ a trademark watching service so that a business knows when they need to file a protest.

Ex Parte Reexamination

If a business misses a trademark violation though, there is now a reexamination procedure. Within 5 years after a trademark is registered, anyone can petition the Director of the USPTO for an “Ex Parte Reexamination” of an approved trademark.

Up to 10-year Ex Parte Reexamination

Up to 10 years after a registration is approved, anyone can file a petition with the Director of the USPTO for “Ex Parte Expungement” of an approved trademark, if it is based on the fact that the trademark was never used in commerce. This expanded the ground for challenging a trademark after it is five-years-old. It also allows for the clearing of dead trademarks.

Other minor provisions

Other than the highlighted changes above, there were also some minor changes too. Specifically, it shortened response deadline to less than 6 months, it creates a rebuttable presumption of irreparable harm, which was already in place in most jurisdictions, and a few addition minor changes. Of course, for Houston, Texas, residents that are having trademark issues, a call to an attorney is immediately needed.