MENU Close
Close
  • Home
  • Services
  • Attorneys
  • Resources
  • News & Events
  • About Us
  • Contact Us
  • Join our Team
Search
Back
    Quick Links:
    Join Webinar
    Read News
    Our Location
    A
    Alternative Dispute ResolutionAntitrust & Trade RegulationAppellate Practice
    B
    Banking & Financial ServicesBankruptcy, Creditors’ Rights, and Financial RestructuringBeer LawBusiness Law
    C
    Cannabis LawConstruction LawCriminal Defense
    E
    Economic Development LawElder Care & Special Needs LawElectronic Discovery ("E-Discovery")Environmental LawEstate Planning and Administration & Wealth PreservationExecutive Compensation, Employment, ERISA, and Employee Benefits
    F
    Food, Beverage & HospitalityFranchise Law
    H
    Health Care & Life SciencesHealth Care ProvidersHigher EducationHospitals and Health Networks
    I
    ImmigrationInsurance CoverageIntellectual PropertyIntellectual Property Litigation, Arbitration, and Dispute ResolutionIntellectual Property Portfolio Strategy, Management & LicensingInternational BusinessInternet Law
    L
    Labor & EmploymentLiquor Law, Licensing, Manufacturing, and DistributionLitigation
    M
    Media LawMergers & AcquisitionsMunicipal Law
    N
    Non-Profit Law
    P
    Patent Preparation and ProsecutionPharmaceutical / Medical Devices / Pharma ServicesProducts and Consumer Liability DefenseProfessional LiabilityPublic Utilities
    R
    Real Estate, Finance, and Land Use
    S
    SecuritiesSolar Energy
    T
    TaxationTelecommunicationsTrademark & Copyright Protection & Enforcement
    V
    Venture Tech & Emerging Growth Companies
    W
    White Collar Investigations & DefenseWorkers’ Compensation
    • New Jersey
    • New York
    • Pennsylvania
    • Blogs
    • Articles
    • Podcasts
    • COVID-19 Resources
    • News
    • Events
    • Webinars
    • About Us
    • Delivering Value
    • Diversity & Inclusion
    • Meritas

    New Jersey

    400 Crossing Boulevard
    8th Floor
    Bridgewater, NJ 08807
    Phone:(908) 722-0700
    Fax:(908) 722-0755

    28 Valley Road
    Suite 1
    Montclair, NJ 07042

    New York

    7 Times Square
    21st Floor
    New York City, NY 10036
    Phone:(212) 808-0700
    Fax:(212) 808-0844

    Pennsylvania

    515 West Hamilton Street
    Suite 502
    Allentown, PA 18101
    Phone:(610) 391-1800
    Fax:(610) 391-1805

    • What sets us apart
    • Attorneys
    • Other Professionals
    • Professional Development
    • Non-Discrimination Policy

    Categories

    Copyright Copyright Infringement Copyright Licensing Copyright Office Copyright|Copyright Infringement|Intellectual Property Copyright|Intellectual Property Court Decisions Double Patenting>Same Invention Double Patenting>Terminal Disclaimers Drafting Patents Drafting Patents>Claims Drafting Patents>Claims>Written Description False Advertising Federal Circuit Food & Beverage General In The News Intellectual Property Labeling Lanham Act Legislation Licensing Navigating the Patent Office Navigating the Patent Office>Examiner Interviews Obviousness/Inventive Step>Prima Facie Obviousness Patent Patent Eligibility Privacy Right of Publicity Social Media Supreme Court Trade Dress Trademark Infringement Trademark Infringement|Trademark Registration|Trademarks Trademark Infringement|Trademarks Trademark Office Trademark Registration Trademark Registration|Trademarks Trademarks TTAB Uncategorized Unfair Competition
    Blogs > More Than Your Mark® > Three Things to Know About...
    Member
    Jeanne Hamburg
    Visit Profile

    Three Things to Know About the Trademark Modernization Act of 2020

    Three Things to Know About the Trademark Modernization Act of 2020

    In December, the Trademark Modernization Act of 2020 (“TMA”) was signed into law. A bipartisan bill, the TMA contains several important trademark law reforms, including clarification of the burden that parties must satisfy to obtain an injunction in an infringement claim. In this article, we provide an overview of three key things you should know about the TMA.

    Presumption of Irreparable Harm in Preliminary Injunction Requests

    In an infringement claim, a trademark holder has the right to seek a preliminary injunction. An injunction is a court order that prohibits a party from taking a certain action, such as continued use of an offending trademark. To obtain an injunction, a trademark holder must establish that it would suffer irreparable harm if the infringement was allowed to continue.

    The TMA clarifies that a trademark holder is entitled to a presumption of irreparable harm when seeking a preliminary injunction in an infringement action. If a court finds that a trademark holder is “likely to succeed on the merits” of its claim, the court must presume that irreparable harm would be suffered and that an injunction is appropriate. In clarifying the law, the TMA resolves an existing circuit court split.

    Revised Protest Procedures: Challenging a Trademark for ‘Non-Use’

    The TMA includes two new procedures for challenging a trademark registration on the grounds of non-use. These new procedures provide a path to attack a registration without bringing a cancellation action. A trademark can be challenged for non-use through:

    • Expungement: Under Section 16A of the TMA, there is a new expungement procedure. Trademark registration can be challenged on the grounds that the mark was never used in commerce. Any person—including third parties—has the right to challenge a registration on these grounds. If a successful challenge is made, the registration will be expunged.
    • Reexamination: Under Section 16B of the TMA, there is also a new reexamination procedure. Somewhat similar to Section 16A, the reexamination procedure can be used to challenge a trademark registration on the grounds that the mark was not in use prior to the registration date.

    Less Time to Respond to Certain Office Actions

    Finally, the TMA grants the USPTO additional authority to reduce the amount of time that interested parties have to respond to official office actions. Under the previous rules, the USPTO was required to set a six-month deadline. The TMA grants the agency the authority to impose shorter deadlines, but not fewer than 60 days. For a fee, applicants may still request the full six-month response period.

    Please contact me at jhamburg@norris-law.com if you require assistance in any matter involving trademarks.

    Member
    Jeanne Hamburg
    Visit Profile

    Related Posts

    Lawsuit claims TEXAS PETE is deceptive Future of Fitness Apps in Question as Adidas files lawsuit against Nike Fair Use or Foul Play?

    Share

    Tags

    #expungement #litigation #trademark examination

    Similar Posts

    November 17, 2023
    TACO TUESDAY For All!
    TACO TUESDAY For All!
    October 6, 2023
    No Matter How Big You Are, Always Clear Your Trademarks
    No Matter How Big You Are, Always Clear Your Trademarks
    June 16, 2023
    The Supreme Court Weighs in on Jack Daniel’s v. Bad Spaniels
    The Supreme Court Weighs in on Jack Daniel’s v. Bad Spaniels

    Helpful links

    • About Us
    • News
    • Services
    • Blogs
    • Attorneys
    • Articles
    • (COVID-19)
    • Events
    • Join our Team
    Connect

    Connect with Us

    • LinkedIn
    • Facebook
    • Twitter
    • Instagram
    • Youtube

    Join our growing team

    We are looking for quality attorneys to help us do more for our clients. At Norris McLaughlin, each attorney has the same opportunity to succeed whether you’re at the beginning of a career or pinnacle of the profession.

    Learn More

    Subscribe to our content

    Receive timely legal information delivered to your inbox

    This field is for validation purposes and should be left unchanged.
    © , Norris McLaughlin, P.A., All Rights Reserved. Attorney Advertising.
    VIEW OUR DISCLAIMER,  TERMS OF USE,  AND PRIVACY POLICY

    We use cookies to ensure that we give you the best experience on our website. If you continue to use this site we will assume you consent to our cookie policy. Learn more