Mikele Bicolli
Dec 3, 2021

Trademark Modernization Act Goes Into Effect on December 18, 2021

A part of the Consolidated Appropriations Act for 2021 passed on 27 December 2020, was the Trademark Modernization Act which comes in effect in few weeks. This update to the Lanham Act aims to combat the rise in scamming and fraudulent trademark filings which come majorly from China. Now individuals, businesses, and the USPTO have new tools to remove unused registered trademarks, and also the USPTO will execute the registration process more efficiently as of December 1, 2022.
More specifically the TMA now introduces two new ex parte procedures to cancel the unused trademarks, ex parte expungement and ex parte reexamination. At the moment this cancellation can be done only through an inter partes proceeding. For the pending trademark examinations, TMA introduces a new procedure where third parties can participate by submitting evidence with the intention to reject the registration. As of now this can be done only through an informal procedure “Letter of protest”. Meanwhile about the irreparable harm, now the division between U.S. appellate courts following U.S. Supreme Court's decision in eBay Inc. v. MercExchange is settled. Now irreparable harm can be presumed in requests for injunctive relief upon a finding of trademark infringement and this makes it easier for trademark owners to achieve injunctive relief in federal courts nationwide.
Eager to see how these amendments will make the brand owners lives easier with the new and improved tools introduced.