The most recent addition to intellectual property federal law, the Trademark Modernization Act of 2020, will directly affect Trademark owners and applicants. The USPTO is acutely aware of the rise in recent years of Trademark applications in general, and has noted the increase in spurious Trademark applications by applicant entities that are false, or difficult to identify, often filed by applicants outside the U.S. Though the new Act increases application fees, it also aims to provide current Trademark owners with greater levity in protecting the marks they have registered.
What Does The New Trademark Act Mean for Trademark Owners?
Affirm Your Own Use
To ensure the best protection of your own Trademark, your use of your registered Trademark should align with the goods or services listed on your registration. Should a proceeding ever be brought against the validity of your Trademark, you should have a record of use of the Trademark in connection with the operations and goods and services stated on your Trademark registration certificate.
Monitor Your Trademark
While this step was recommended prior to the adoption of the new Act, the importance of monitoring your Trademark has risen significantly due to the increase in potentially infringing applications. Opposing a Trademark application was previously permitted only after the new application was approved for publication in the Trademark Official Gazette, which would coincide with the permitted opposition period of 30 days. The new Act now provides that a 3rd party opposition (by current Trademark owner) may be filed with supporting evidence, prior to the publication period. The ability to oppose a mark prior to publication has potential to save litigation costs at a later stage, however, alternatively it will may also increase the hurdles new applicants face when filing a new trademark application.
A Strengthened Claim
Specifically, the Act provides Trademark owners who file a claim, with a presumption of irreparable harm if a likelihood of success on the merits is found by the Court – placing the burden on the trademark applicant to prove that their trademark will not infringe on the existing Trademark. While a claim of irreparable harm can be challenged, the new law strengthens the position of the Trademark owner claimant. While this aspect of the new Law may help relieve the excessive filing of Trademark applications by false entities, it can potentially place a higher burden of proof on Trademark applicants defending legitimate Trademark applications.
Your Trademark is a business investment that adds value to your operations and your brand reputation – Behrends Legal can advise you regarding your Trademark registration and protection options.