December 2020 and January 2021 have seen a number of important trademark legal developments, including passage of the Trademark Modernization Act, fee increases for filings with the USPTO, and the Supreme Court’s refusal to address a vexing circuit split concerning the tension between trademark infringement and free speech.

Trademark Modernization Act

  • Presumption of Irreparable Harm

On December 27, 2020, as part of the COVID-19 relief and government funding package, the Congress passed new legislation (called the “Trademark Modernization Act of 2020” or “TMA”) that restores the longstanding presumption that irreparable harm follows from a showing of trademark infringement. The legislation reverses the recent trend of courts requiring that trademark owners prove “irreparable harm” to qualify for injunctive relief. The amorphous nature of “irreparable harm” and difficulty of proof have significantly burdened a trademark owner’s ability to obtain preliminary relief in the relevant circuits. The TMA resolves this controversy in a trademark owner’s favor.

  • Streamlined Procedures for Third-Party Challenges
In response to the profusion of questionable trademark filings from China, the TMA calls for the U.S. Patent and Trademark Office (USPTO) to adopt and implement new streamlined procedures for third party challenges to spurious applications and issued registrations. The current cost and timeline to pursue trademark opposition and cancellation proceedings are significant and burdensome. The TMA calls for expanding the scope of evidence the PTO will consider in a third-party challenge to registration, and implementation of a streamlined procedure for challenging issued registrations.
  • Cleaning House

The TMA also tasks the Government Accountability Office with coming up with legislative recommendations designed to improve the accuracy of the Trademark Register and reduce the number of inaccurate or false claims of use. In furtherance of that effort (but not pursuant to the TMA), on January 13, 2021, the PTO issued a new report titled “Trademarks and Patents in China: The Impact of Non-Market Factors on Filing Trends and IP Systems” detailing the results of their multi-year investigations. The full report is available here. While not limited to trademarks, the report offers useful insights into the challenges of trademark registration in China, and examines the dramatic rise of bad-faith trademark filings and fraudulent trademark specimens challenging the limited resources of the USPTO and potential drivers.

Fee Increases

Separate from the developments in the TMA, the PTO has implemented, as of January 2, 2021, new fees for a number of procedures, including the filing, protest, appeal, and challenge of an application. The fee changes include both increased fees as well as new fees for prosecution and challenges before the Trademark Trial and Appeal Board (TTAB). A summary of the final fee changes is available for viewing here. The PTO has also announced URL changes going into effect on January 17, 2021 designed to provide a more consistent customer experience. Visitors who encounter “page not found” or “404 error” messages after the 17th may need to update their “favorite” links.

Supreme Court Denies Cert.
Finally, on January 18, 2021, the U.S. Supreme Court denied cert in the closely watched “Bad Spaniel” appeal of the Ninth Circuit’s decision that a “Bad Spaniel” dog chew toy closely resembling a Jack Daniel’s whiskey bottle is an expressive work entitled to First Amendment protection.
To the disappointment of many trademark practitioners, the High Court declined to take up the current Circuit split on the balancing of free speech and trademark considerations for ordinary commercial goods. The Ninth Circuit’s decision in Jack Daniel’s Properties, Inc. v. VIP Products LLC puts it at odds with other circuits and threatens to undermine longstanding likelihood of confusion analysis for any product purporting to be a parody.

Note: This publication is distributed with the understanding that the author, publisher and distributor of this publication and/or any linked publication are not rendering legal, accounting, or other professional advice or opinions on specific facts or matters and, accordingly, assume no liability whatsoever in connection with its use. Pursuant to applicable rules of professional conduct, portions of this publication may constitute Attorney Advertising.

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