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Recent Changes to US Trademark Law Benefitting Trademark Registration Holders

October 15, 2021 12:40 PM | Leah Halpert (Administrator)

Federal trademark registrations are a necessity for every business owner in order to protect your brands, logos, trademarks, and the overall goodwill of your company.  The purpose of trademark registration is to help prevent infringement and theft of your intellectual property, and to provide owners with remedies should infringement happen.  Without a federal registration, stopping an infringer becomes a very arduous, difficult, and expensive task.

On December 27, 2020, Congress provided even more benefits to federal trademark registration holders by enacting the Trademark Modernization Act of 2020 (TMA2020). The TMA2020 adds the following new brand protection methods to the federal trademark registration owner's arsenal:

1. Trademark registration holders may now file petitions to the United States Patent and Trademark Office (USPTO) to have trademarks expunged or re-examined when there is evidence of no use.  This helps clear the trademark register of problematic and potentially fraudulent registrations without having to go through a lengthy, expensive cancellation proceeding.

2. Registration holders can now submit evidence directly to the USPTO in support of refusing a potentially infringing trademark application.  This expands the previous Letter of Protest procedure and helps stop problematic trademark registration applications at the start (and avoids lengthy, costly opposition proceedings).

3. Plaintiffs who hold federal trademark registrations are now presumed to have "suffered irreparable harm" in federal lawsuits seeking injunctions against the use of an infringing mark.  In short, the plaintiff will not have to prove irreparable harm in addition to proving infringement, as was necessary in the past; rather, the defendant will need to prove that there was no irreparable harm in order to succeed.

Finally, the registration process itself will be streamlined by shortening the traditional 6 month deadline to respond to Examining Attorneys, meaning you can get your registration much more quickly.

This article provides more details about these changes: https://www.natlawreview.com/article/us-trademark-modernization-act-provides-new-relief-to-trademark-owners

The USPTO has 1 year to implement all of these changes.  In the meantime, if you have any questions about your trademarks and trademark protection, please contact me, Leah Halpert, Halpert Trademark Law.

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