Changes to Trademarks - The 2020 Trademark Modernization Act (TMA) Rules Are Now Active

by Rob Kimmer

Irreparable Harm

Injunctions can be an incredibly useful trademark enforcement tool, but they are difficult to obtain in many cases. Since the U.S. Supreme Court's patent related decision regarding irreparable harm in eBay Inc. v. MercExchange, 547 U.S. 388 (2006), U.S., appellate courts have been divided on whether they extend that ruling to trademark cases. The TMA ends that division once and for all making it easier to get an injunction – a valuable tool!

Challenging Trademarks at the USPTO

Say a preexisting mark is blocking the trademark that your company wishes to secure after a proper search is done. It may actually now be available with a little work. Registered trademarks can now be challenged through two new types of administrative proceedings at the USPTO - expungement and reexamination – both new and valuable tools that we can employ. Success in either the expungement or reexamination proceeding will result in the challenged goods or services being canceled, potentially paving the way for your own trademark application to be allowed or Registered.

Letters of Protest: A Useful and Underutilized Tool

Letters of Protest have always been allowed and have always been one of my favorite underutilized tools of trademark practice (an open secret). Now, they just got better and more powerful. The TMA now allows letters from third parties – which can be common law trademark owners as well as companies who have not yet filed - but are thinking of filing - after having a proper search conducted (of course).

The TMA is yet another step forward in the ongoing process of trying to improve trademark process and law and provides new tools to remove invalid or improper trademarks from the register. We can all benefit from properly utilizing these new, powerful tools. I look forward to using them with you in practice to benefit clients and brand owners/markowners represented by Mei & Mark, LLP. If you have any questions, feel free to contact Rob Kimmer, Head of Trademarks at Mei & Mark LLP.