On December 27, 2020, the Trademark Modernization Act (TMA) was signed into law. This Act makes significant amendments to the Lanham Act which was designed to strengthen the rights of trademark owners. For example, TMA clarifies the evidentiary burden to obtain injunctive relief in trademark infringement litigation; changing certain procedures in trademark prosecution before the U.S. Patent and Trademark Office (“USPTO”), and provides new procedures for canceling fraudulent registrations.
Previously, trademark owners were presumed to suffer irreparable harm upon a showing of likely confusion when seeking injunctive relief. In eBay Inc. v. MercExchange, 547 U.S. 388 (2006), the Supreme Court ruled that a plaintiff must prove irreparable harm to obtain injunctive relief, and they were not entitled to this presumption. However, circuit courts split when they applied this holding to trademark cases. Some circuits required trademark plaintiffs to prove irreparable harm, while others did not. The TMA clarifies that irreparable harm can be presumed for injunctive relief upon a finding of trademark infringement.
The TMA also introduces new procedures to allow trademark owners to more easily challenge registrations on the basis of non-use. The Act now allows third parties to submit evidence into the record if the evidence is tied to a “particular ground for refusal.” In addition, the TMA adds non-use grounds for seeking cancellation of a registered mark whereas before; cancellation proceedings often entailed a showering that the registrant internally misrepresented its marks in commerce to the USPTO.
Finally, the USPTO saw an increase in foreign applications using doctored photographs as evidence of commerce. As a result, the Act establishes new procedures to review and cancel existing registrations for unused marks.
The TMA will give trademark owners another tool to challenge problematic applications and registrations. The Act also eases the burden on trademark owners who seek injunctive relief.