5 Jul
2021

Why the US Trademark Modernisation Act is a game changer for IP protection

Later this month, WTR will be publishing the second edition of WTR Global Leaders – a unique publication in which a select number of the trademark elite reflect on their professional journeys and offer insights and guidance into career development, practice management and trademark industry trends. 

The Trademark Modernisation Act was passed by Congress as part of a broad covid-19 spending bill in December 2020. Rather than merely routine updates, the act introduces several far-reaching measures including expedited cancellation proceedings to tackle registrants that have never legitimately used their marks in US commerce, along with new re-examination and expungement proceedings. We put our Global Leaders on the spot, asking them what effect the act is likely to have on US and international brand owners looking to protect their rights in the United States.

A more efficient system

Amy Wright, partner at Taft Stettinius & Hollister, is firmly in favour of the new legislation. “It will make the system more efficient, so I am all for it.” She judges that its biggest impact will be to add “a nice layer of accuracy to the USPTO, its bank of registered trademarks and, most importantly, the goods and services covered by them”. This in turn should drive down the overall number of likelihood of confusion objections issued by examining attorneys and ultimately help to streamline the registration process.

Clearing deadwood from the register

Co-chair of Cozen O’Connor’s IP department, Camille Miller, welcomes the act’s intention to alleviate the growing difficulty for business owners to find available marks, she also sounds a note of caution. “It will provide trademark owners with new options to protect their brands, but the new procedures could also subject these brand owners’ applications and registrations to new and increased opposition from competitors.”

A green light for injunctions

“The most significant impact of the act is that it restores the presumption of irreparable harm against trademark infringers, making it easier for trademark owners to obtain injunctions against them,” says Michael Kelber, partner at Neal Gerber Eisenberg. “On the other hand, it also creates mechanisms to make it easier to challenge or remove overly broad trademark filings. While it will not dramatically change our clients’ overall policing strategies, the act should enhance the ability of brand owners to fight back against the questionable practices of some, particularly international, trademark filers.”

New ex parte post-registration proceedings

Nicole McLaughlin, partner Duane Morris points out that as well as new ease of obtaining injunctions, the act will allow rights holders to pursue two new ex parte post-registration proceedings: expungement and re-examination at the USPTO for non-use. “These will be less costly and time consuming than the current inter partes proceedings,” she reports. The act also allows third-party IP owners to submit evidence directly to USPTO examiners for consideration during examination, in the hopes of convincing them to issue a refusal. “This should save trademark owners time and money if they do not have to oppose an application because the USPTO has refused registration. Enlisting a watch service has become even more critical, as IP owners can monitor pending applications for problematic trademarks and take action early.”

Impact abroad and online

“International rights holders should closely review their portfolio with counsel and decide together what can be kept and what should be culled,” advises Paul McGrady at partner, Taft Stettinius & Hollister. “The same is true for domain names under management. With squatters becoming ever more clever and new gTLD registries changing business models and ownership, there is simply no way to out-register the bad guys. Each dollar spent on maintaining dead-wood domain names is one less dollar that can be spent on meaningful enforcement.”

WTR Global Leaders 2021 will be published in July. Other articles in this insight series include:

Liz Rutherford-Johnson

Author | Chief sub-editor

[email protected]

Liz Rutherford-Johnson