There we were, all locked down in our houses and not going to the INTA Annual Meeting, and there was a Trademark Modernization Act! Of 2020!
Probably a very good idea, though. John Welch recommends this article by Raffi Zerounian and Justin Thiele of Hanson Bridgett, LLP, from The Trademark Lawyer magazine (Issue 2 2021) as providing “a very good summary of the provisions of the Trademark Modernization Act of 2020.”
The authors conclude, quoted by John:
The TMA provides a number of new tools in the trademark practitioner’s toolbox, especially when faced with the task of clearing the federal register of blocking (or potentially blocking) but unused marks. Although the TMA’s reforms are largely limited to these areas, it is a promising step in creating a more efficient register. The long lead time before formal implementaion in 2021 gives ample time for the USPTO to promulgate rules under the TMA. Accordingly, much remains to be seen at the practical level of the effects of the TMA.
Regarding the “new tool” referred to above, it will no longer be necessary to go through the arduous process of initiating and prosecuting a petition for cancellation of a trademark registration which investigation indicates has been abandoned for six to 10 years. It will be also to be easier to knock out a registration that was never used as stated in the registration. These problems can now be addressed new procedures, one called “expungement” for abandonment and the other a form of post-registration reexamination for never-used registrations.
The two new procedures are explained clearly in the article, and should be a client money saver in a lot of situations — though it also seems almost inevitable that some unintended consequence will also make some cases worse. Don’t ask me what I have in mind; it’s just this feeling you get after a couple of years at this.
OK, since you asked. You just know some clown is going to try to game the system by using these new procedures as end-runs around what should be traditional cancellations. Obviously the Commissioner will promulgate rules to deal with this, especially once the soft spots get picked up in practice; still, it’s good that Congress is even trying, however. And surprising.
The article notes a couple of other important changes worth being aware of if you work in this area:
- Some response deadlines for responses to office actions will be shortened to as little as 60 days. The authors note that the standard period of six months for all office actions may have made sense in the Pony Express days (well, they say paper correspondence) but don’t now. This is good for everyone involved when the situation requires only minor adjustments, because experience shows that six-month deadlines do not impose the kind of rigor on your docketing that you really ought to have here.
- The Act formalizes and firms up the Letter of Protest procedure, requiring payment of a fee to file one and that the Trademark Office respond to them.
- Perhaps most significantly, Congress resolved a split among the Circuits concerning the application of the rule for patents enunciated by the Supreme Court in eBay Inc. v. MercExchange, L.L.C. and restored the presumption of irreparable harm to a finding of trademark infringement.
This last change is good as far as resolving a Circuit split — something Congress should be doing a lot more of, given that trademark law is essentially a national practice today. As a practical matter, this means two things: (a) an injunction will always be available where infringement is found, and (b) the journey of trademark liability further and further away from what was once the sine qua non of tort liability — damage or harm to the plaintiff — continues apace.
On the other hand, it does get trademark practice out of one rather silly rut. That’s the one that can happen where a defendant is found to have infringed but does not prove actual damages in terms of lost profits. This is something plaintiffs seldom can or will do, preferring to rely instead on so-called “infringer’s profits” as a measure of compensation.
Now when that happens, at least in theory, the plaintiff mark-holder has to argue to the court (which has the sole power to grant equitable relief) that even though there is no proof of damages, it has been damaged — and irreparably! — or, even more strange, it will be… and that an injunction is justified. I say “at least in theory,” though, because judges really don’t want to not award an injunction when there’s infringement.
So they do, often by saying that although under eBay there may not be a presumption of irreparable harm… still… um, well, harm is not presumed, it’s just pretty much always … presumed.
I mean, yes, it is weird.
On the other other hand, if you can’t or won’t prove damages… why exactly are you entitled to any relief? Is it because trademarks are rights… in gross?