The Trademark Modernization Act of 2020 (“TMA”) came into force on December 27, 2020 and came into force on December 18, 2021. The TMA amends the Lanham Act in several ways, but this article focuses on (1 ) new tools to remove obsolete trademark registrations; and (2) reinstatement of the presumption of irreparable harm in trademark cases after finding a likelihood of success on the merits.

Reinstatement of presumption of irreparable harm

The most powerful tool for preventing infringement in a brand owner’s toolbox is the ability to obtain an injunction very early in a case, i.e. a court order restraining the sale of the counterfeit product or service. Prior to 2006, trademark owners seeking an injunction benefited from a presumption of irreparable harm upon presentation of a likelihood of confusion, which made it much more likely to obtain an early injunction.

In 2006, the Supreme Court ruled that a plaintiff must to prove irreparable harm to obtain an injunction. While this case eBay, Inc. v. MercExchange, was a patent infringement case, its detention extended to trademark cases in some, but not all, federal courts. As a result, plaintiffs carefully considered whether they could sue in a forum that applied the presumption, as it greatly increased the likelihood of a speedy injunction.

The TMA has resolved this divide between the courts. TMA amends trademark law to clarify that a rebuttable presumption of irreparable harm applies when finding infringement in the context of a permanent injunction, or when finding likelihood of success on the merits in the context of a preliminary injunction. The amended provision applies to injunctions regarding related claims under trademark law, namely unfair competition, false advertising, dilution or cyberpiracy claims.

Although the TMA has resolved the split, it is important to note that the TMA is only re-establishing a presumption of irreparable harm. As with any presumption, if the presumption is rebutted by the defendant, the plaintiff will have to present proof of irreparable harm. Due to the fast-paced nature of motions for preliminary relief, plaintiffs seeking an injunction must carefully consider the merits of establishing irreparable harm, even with a view to reinstating the presumption.

Takeaway key:

By reinstating the rebuttable presumption of irreparable harm in trademark cases, the TMA may make it easier for trademark owners to establish the right to an injunction.

Clear deadwood from the brand registry

Almost every brand owner has experienced the disappointment of having identified the perfect brand, only to find out that it had been taken. To add insult to injury, in some cases it appears that the existing registered trademark was never used or is no longer used, but the registration remains on the trademark registry until it expires.

Prior to the TMA, the options for getting rid of this conflicting mark were limited to (1) waiting to see if the registration has expired or (2) asking the Trademark Trial and Appeal Board to cancel the registration of the mark from blockage. Neither was quick, and the latter option could entail significant expense.

The TMA provides two new tools to remedy this situation, ex-parte Cancellation and ex-parte New exam. Anyone can ask the USPTO to expunge a registration, in whole or in part, when there are specific goods or services listed in the registration for which the mark was registered. never been used in American commerce. Exemption challenges may be filed between the third and tenth anniversary of registration. Similarly, any person may seek reconsideration of a registration less than five years old where the registered mark has not been used in U.S. commerce for any or all of the goods or services listed in the registration as of the relevant date. of the application process.

In both cases, the burden of proving non-use is very heavy – it is always difficult to prove a negative. Therefore, a request must include the elements of a reasonable investigation as to use and facts and evidence must be cited in support of the request. Once the USPTO determines that the petition provides a At first glance if not used, the onus is on the registrant to disprove the case.

Key points to remember:

1. The TMA should provide a more robust way to cancel trademark registrations for non-use.

2. Trademark owners should carefully review their portfolios to ensure that each registered trademark they own is used with all products and services listed in the registration.

3. Prevailing in a trademark expungement or re-examination proceeding based on non-use requires a thorough pre-filing investigation.