Modernizing Trademarks: Trademark Modernization Act of 2020

By: Haley Nixon

With an unprecedented year, many missed the signing of the 2020 Trademark Modernization Act that was passed with the coronavirus relief bill.[1]  The Act, signed on December 27, 2020 and being implemented by December 27, 2021, is an amendment to the Lanham Act that introduces several changes to current trademark law.[2]

One of the most noticeable changes is the creation of a uniform rule establishing a rebuttable presumption of irreparable harm.[3]  The primary remedy for trademark infringement is injunctive relief.[4]  For a plaintiff to prove injunctive relief, they must show: (1) a likelihood of success on the merits, (2) a likelihood of irreparable harm in the absence of the injunction, (3) that the balance of the hardships tip in the movant’s favor, and (4) that the injunction would not be adverse to the public interest.[5]  Courts have traditionally ruled that a likelihood of confusion creates a presumption of irreparable harm, until the Supreme Court’s decision in eBay Inc. v. MercExchange, LLC. [6]  In eBay, the plaintiffs had to affirmatively prove irreparable harm despite having already proved patent infringement.[7]  Even though eBay was a patent case, the Ninth Circuit found the analizis applied to trademark law and required plaintiffs to affirmatively prove irreparable harm, breaking away from the usual presumption and creating a circuit split.[8]  The Trademark Modernization Act created a uniform rule establishing a rebuttable presumption of irreparable harm ending the circuit split.[9]

The Trademark Modernization Act adds two post-registration proceedings to cancel unused trademarks that have never been used in commerce or were not used in commerce before a relevant date.[10]  The relevant date can be the filed date for an intent-to-use 1(b) trademark, the amended date of an intent-to-use 1(b) trademark, or the expired period of time for filing a statement of use for an intent-to-use 1(b) trademark.[11]  To qualify for trademark protection, the mark must be (1) distinctive of the source of the goods or services, (2) not be disqualified by various statutory bars, and (3) used in commerce.[12]  Once the trademark is registered, it is a timely and costly process to initiate a cancellation proceeding.[13]  Under the Trademark Modernization Act, a third party may petition to have a mark expunged for never being used in commerce.[14]   A third party may also file to reexamine a trademark that was not used in commerce with those goods or services before a particular relevant date.[15]  This new edition can make it easier and cheaper for third parties to remove trademarks that block their registration.

The Trademark Modernization Act also allows a third party to submit evidence that a new trademark should not be registered.[16]  The act codifies the United States Patent and Trademark Office’s (USPTO’s) “Letter of Protest,” which allows third parties to submit evidence on a trademark registrability.[17]  A third party must identify the legal reason to refuse the trademark and provide evidence to submit a protest.[18]  The Trademark Modernization Act allows the USPTO to charge a fifty-dollar fee for the protest and makes the USPTO decision on the submitted evidence final.[19]            

The Trademark Modernization Act strengthens trademark protection.  Creating a uniform rule establishing a rebuttable presumption of irreparable harm not only ends a circuit split but helps larger businesses that could not prove irreparable harm from smaller infringements.[20]  The Act, adding two post-registration proceedings to cancel unused trademarks, ensures the register is current and accurate and not being used to block proper trademark owners.[21]  By allowing a third party to submit evidence that a new trademark should not be registered, the Act allows trademark owners to better protect their trademark.[22]  Nevertheless, some are worried about the amount of power The Trademark Modernization Act gives to the USPTO to police the register aggressively.[23]  However the Trademark Modernization Act helps to protect consumers and trademark owners alike. So, it can be regarded as one of the few good things to come out of 2020.


[1] Trademark Modernization Act of 2020, H.R. 6196, 116th Cong. (2020).

[2] Id.

[3] Id. at §7.

[4] See Barton Beebe, Trademark An Open-Source Casebook 792 (7th ed. 2020) http://tmcasebook.org.

[5] See Lanham Act § 34(a), 15 U.S.C. § 1116(a); see also Barton Beebe, supra note 4.

[6] See Barton Beebe, supra note 4.; see also eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).

[7] See eBay Inc. v. MercExchange, LLC, 547 U.S. 388 (2006).

[8] See Herb Reed Enter., LLC v. Fla. Ent. Mgmt., Inc., 736 F.3d 1239 (9th Cir. 2013); see also Adidas Am., Inc. v. Skechers USA, Inc., 890 F.3d 747 (9th Cir. 2018).

[9] Trademark Modernization Act of 2020, H.R. 6196, 116th Cong. § 7 (2020) (enacted).

[10] Id. § 5.

[11] See James G. Tillen, What is the Trademark Modernization Act of 2020 and Why Does it Matter?, Lexology (Feb. 17. 2021), https://www.lexology.com/library/detail.aspx?g=a5950cd9-3acd-4d9a-8bcd-8ea535e0e1e9 (explaining the Trademark Modernization Act of 2020).

[12] See Barton Beebe, supra note 4 at 31.

[13] John S. Miranda, What Does the Trademark Modernization Act Mean for Brand Owners, The Fashion L. (Feb. 15, 2021), https://www.thefashionlaw.com/the-trademark-modernization-act-and-what-it-means-for-brand-owners/.   

[14] Trademark Modernization Act of 2020, H.R. 6196, 116th Cong. § 5 (2020).

[15] See Trademark Modernization Act Establishes New Procedures, USPTO, https://www.uspto.gov/trademarks/laws/2020-modernization-act (last visited Mar. 17. 2021).

[16] Trademark Modernization Act of 2020, H.R. 6196, 116th Cong. § 3 (2020).

[17] See Trademark Modernization Act Establishes New Procedures, supra note 14.

[18] See Letter of Protest Practice Tips, USPTO, https://www.uspto.gov/trademarks/trademark-updates-and-announcements/letter-protest-practice-tip (last visited Mar. 17. 2021).

[19] See Trademark Modernization Act Establishes New Procedures, supra note 14.

[20] See Thomas Dunlap, The 2020 Trademark Modernization At Changing the Litigation Equation, JD Supra (Feb. 10, 2021), https://www.jdsupra.com/legalnews/the-2020-trademark-modernization-act-8793126/.

[21] See John S. Miranda, supra note 12.

[22] See U.S. Trademark Modernization Act of 2020 Signed Into Law, Jones Day (Dec. 2020), https://www.jonesday.com/en/insights/2020/12/us-trademark-modernization-act-of-2020-signed-into-law.

[23] See John S. Miranda, supra note 12.

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