Dec 21 2020

WASHINGTON, D.C. – Today, U.S. Senator Thom Tillis (R-NC) and Congressman Hank Johnson (D-GA) announced that bipartisan, bicameral legislation they co-introduced to give the U.S. Patent and Trademark Office new tools to minimize barriers to entry and better protect both American consumers and brand owners will become law. The Trademark Modernization Act was included in the year-end spending package that is expected to be signed into law this week.

In particular, the bill provides tools to combat the recent flood of fraudulent trademark applications from China that rely on doctored photographs to procure trademark registrations. The fraudulent trademarks make it difficult for American consumers and businesses by making it difficult for new businesses to obtain trademark protection for their commercially valuable trademarks. The legislation creates new procedures to improve trademark examination effectiveness and efficiency, and to allow third parties to request ex parte cancellation of trademark registrations for trademarks that have not been used. This will help ensure that customers can look at a trademark and reliably know who is selling them a given good or service. 

“I applaud my colleagues in the House and Senate for including the Trademark Modernization Act in the year-end spending package and agreeing that modernizing the United States trademark system to better protect American consumers and brand owners is a priority,” said Senator Tillis. “Earlier this year, I proudly co-introduced this bipartisan, bicameral legislation that will modernize the trademark system and make changes that protect small businesses and consumers across North Carolina. This much-needed update will help combat fraudulent trademark registrations coming from China and move our trademark system into the 21st century.”

“Trademarks contribute significant value to the U.S. economy,” said Congressman Johnson. “It’s important that false and fraudulent statements made in trademark applications not serve to block legitimate market entrants  — particularly small businesses  — seeking trademark registrations. The Trademark Modernization Act gives the Patent and Trademark office important tools to address and combat these fraudulent practices, and to protect good-faith actors in the trademark system. I am pleased to have worked with Representatives Collins, Nadler, and Roby, and Senators Tillis and Coons on this important effort. Consumer protection is also a key focus of the trademark system. A well-functioning trademark system allows consumers to rely on trademarks to know the source of the products they buy. That is why this legislation clarifies that when a trademark violation is proven in court, a rebuttable presumption of irreparable harm exists. In many trademark cases, without injunctive relief, the risk that consumers will be confused is high.”

The legislation was co-sponsored by Representatives Jerrold Nadler (D-NY), Doug Collins (R-GA) and Martha Roby (R-AL) in the House of Representatives and Senator Chris Coons (D-DE) in the Senate.

The Trademark Modernization Act will:

  • Create new expedited ex parte cancellation procedures that would allow a new-market entrant or other third party to request cancellation of a trademark registration when the mark was never used or was not used before registration.  The new procedures offer options in addition to traditional inter partes cancellation, which is often a time-consuming and expensive process.
  • Codify additional trademark examination procedures, which gives the U.S. Patent and Trademark Office flexibility and additional authority to gather evidence during examination.  
  • Clarify that, notwithstanding the Supreme Court’s decision in a patent case, eBay, Inc. v. MercExchange LLC, a rebuttable presumption of irreparable harm exists for trademark violations.

A copy of the full bill text can be found here.

A section-by-section analysis of the bill can be found here.

A one-pager on the bill can be found here