CONGRESS PASSES TRADEMARK MODERNIZATION ACT LEGISLATION

In December 2020, the U.S. Congress took action that will have a significant effect on brand holders. At the end of the year, Congress passed the Trademark Modernization Act (“TMA”) that, inter alia, provides additional tools to the USPTO to respond to the rise in improper behavior in trademark filings including filing fraudulent claims of use. The Act creates two new expedited procedures, expungement and reexamination, to challenge questionable claims of use in U.S. commerce. Expungement will allow for expedited challenge of a registration on the basis the mark “has never been used in commerce on or in connection with some or all of the goods or services recited in the registration.” The petition for expungement must identify the goods/services that were never used in commerce under the mark, along with any supporting evidence and a verified statement setting forth “the elements of the reasonable investigation the petitioner conducted to determine that the mark has never been used in commerce.”

The new law also provides for reexamining a registration based on a claim that the mark “was not in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before the relevant date.” The “relevant date” is the filing date of use-based application or the date an Amendment to Allege Use was filed (or the expiration date of the deadline for filing the Statement of Use). The petition must identify the goods/services that were not in use in commerce as of the relevant date, along with supporting evidence and a verified statement setting forth the elements of the investigation conducted

The Director of the USPTO is also allowed to initiate either proceeding, presumably if a bogus specimen or claim of use is brought to the USPTO’s attention.

The TMA provides the USPTO has one year to implement regulations to allow for challenges to improper claims of use. It is expected USPTO rulemaking will further clarify the requisite evidence to initiate a claim. The details and deadlines involving such proceedings, and the interplay with other challenges, remain open questions that will be resolved in rulemaking.

The other significant provision in the new Act is to create a rebuttable presumption that irreparable harm exists when trademark infringement is shown. This provision should assist in obtaining injunctions in trademark litigation in the courts.

The TMA also codifies trademark examination procedures that allow third parties to submit evidence in a Letter of Protest, and also give the USPTO the flexibility to set response periods by regulation (and presumably for shorter periods than the current 6 month time frame for all Office Actions to clear “deadwood” sooner).

Dykema’s Trademark Practice Group Chair, Jennifer Fraser, was involved in providing comments and language for the proposed legislation to Congressional Staff.

NEW COPYRIGHT APPLICATION FOR SHORT ONLINE LITERARY WORKS

The US Copyright Office has issued a final regulation (37 CFR §202.4) permitting a single, “group” registration for “Short Online Literary Works”.

To be eligible, each of the works included in the registration “must be published as part of a website or online platform, including online newspapers, social media websites, and social networking platforms.” Further, each covered work must be comprised mainly of text (this requirement distinguishes the category of covered works from the broader definition of “literary works”, which includes words, numbers, symbols). Thus, the registration will cover only copyright rights in the text of each individual work. No other copyrightable aspect will be protected, including as a compilation or collective work.

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