What Online Sellers Need to Know About the Trademark Modernization Act

If you own a company that sells products online or elsewhere, it’s important to protect your brand with a trademark. A trademark is a word, phrase or symbol that identifies your brand. Filing a trademark with the USPTO protects your brand name, logo and tagline from infringement. While the process to file a trademark can be long and complex, recent changes have gone into effect which help streamline the process.

What is the Trademark Modernization Act?

The Trademark Modernization Act (TMA) went into effect in December of 2021. Signed in December 2020, it amends the original Trademark Act (also known as the Lanham Act) of 1946. While the earlier law set up a system for federally registrering trademarks, it is not surprising that intellectual property law has changed in the intervening decades, and that the process was in need in modernization. The changes will provide brands with additional tools for protecting their trademark, and well as for challenging the claims of others.

Changes to Trademark Law

The TMA improves trademark law in several ways:

Easier to Challenge Unused or Fraudulent Trademarks

Previously, it was difficult to challenge trademark claims that were inaccurate or not in use. If your perfect brand name was already in use by a foreign entitity or a party who never did anything with it, you were pretty much out of luck. Now, it is easier and more cost-efficient for any party to challenge and remove trademark claims. The intended goal is to help de-clutter the Trademark Registry.

If the trademark was never used, an expungement can be petitioned to remove unused goods/services from the trademark. It can be filed within three and ten years of the original trademark filing. A petition for reexamination of a trademark works in a similar way, except the non-use is restricted to a certain time period, and the petition must be filed within five years of the trademark’s registration.

Ability to Shorten Deadlines

Generally, applicants are required to reply to USPTO communications within six months of the issuance date, or risk abandoning their application. The new rules allow trademark examining attorneys to shorten this response time at their discretion. This is intended to prevent foreign filings for commerce that is not in the US from slowing down the process.

Standardizing the Presumption of Irreparable Harm

In order to file a court order to stop other parties who are using your trademark, you must show that the trademark owner is being “irreparably harmed” by the action. However, what that entailed varied depending on jurisdiction and state laws. The TMA provides national uniform standard for determining irreparable harm that applies to all requests for restraining orders or injunctions.

Letters of Protest

The USPTO has a longstanding practice of allowing third parties to submit letters of protest as evidence in a trademark registration application. The changes to the law codify this practice by setting a two-month deadline for submission, allowing the charging of filing fees, and clarified that USPTO’s decision regarding the protest is final, and not subject to review. This will allow third parties who were previously using the trademark to challenge any new trademark claims.

What This Means For Online Retailers

If you sell goods online, the changes to the law will make it easier and more cost-effective to protect your trademark. It will allow you to challenge the claims of those who registered your brand name but never used it, and those trying to file a new registration for your existing name. In addition, you will have clear guidelines and processes to challenge unauthorized uses of your trademark, and obtain a court order to put a stop to it.

While all of this is beneficial to online retailers, it also means that you must be more vigilant when it comes to actively using your trademark, and avoiding using the trademarks of others. Intellectual property theft is rampant in online spaces, and the new tools for enforcing non-use and infringement can also be used against you if you are the one who is accused to be in violation.