Trademark and Copyright Law Alert - New U.S. Intellectual Property Laws
The lengthy Consolidated Appropriations Act, 2021, H.R. 133, signed into law on December 27, 2020, had several new intellectual property provisions tucked inside.
TRADEMARKS
Trademark Modernization Act of 2020 (TMA).
- Effective December 27, 2021, there will be three new procedures for challenging any then-existing trademark application or registration.
- Letter of Protest. During the examination of a pending application, a third party may submit to the Director of the U.S. Patent and Trademark Office (USPTO) evidence relevant to a ground for refusal of that application. The Director of the USPTO will have 2 months to review this evidence, and will have absolute discretion whether or not to include it in the record of that application for consideration by the examining attorney.
Commentary: This change codifies the current informal procedure for the submission of a Letter of Protest, and it appears to expand the issues that may be raised. This procedure is useful to avoid the expense of a formal opposition or cancellation proceeding.
Practical Tip: You should consider using a trademark watching service to monitor your important trademarks so you can learn of any application filed to register a possibly conflicting trademark for which you may wish to file a Letter of Protest. - Within 5 years after registration, any person may petition the Director of the USPTO for an “Ex Parte Reexamination” of the registration to delete some or all of the recited goods or services on the basis that the mark was not in use in commerce on or in connection with them when the application was filed (if use-based), or when an amendment to allege use was filed or the filing period expired (if intent-to-use-based).
Commentary: One of the Act’s sponsors said that this is aimed to deal with the “significant increase in trademark registrations that falsely claim use of a mark that has, in fact, not been used by the registrant.”
Practical Tip: You may wish to investigate, and petition for reexamination of, a registered trademark of your competitor if you believe that trademark was not in use as required and that registration is blocking the registration of your own trademark. - Between 3 and 10 years after registration, any person may petition the Director of the USPTO for “Ex Parte Expungement” of the registration for some or all of the recited goods or services on the basis that the mark has never been used in commerce on or in connection with them.
Commentary: This expands the grounds on which a registration may be challenged after it is five years old. It facilitates the clearing of deadwood from the trademark register as to a non-U.S. registrant who obtained a U.S. registration based on foreign rights because it makes possible a claim that nonuse of the mark in U.S. commerce resulted in the abandonment of U.S. rights without requiring proof that the registrant had the “intention not to resume” use.
Practical Tip: You may wish to investigate, and petition for expungement of, a registered trademark of your competitor if you believe that trademark was not in use as required and that registration is blocking the registration of your own trademark.
- Letter of Protest. During the examination of a pending application, a third party may submit to the Director of the U.S. Patent and Trademark Office (USPTO) evidence relevant to a ground for refusal of that application. The Director of the USPTO will have 2 months to review this evidence, and will have absolute discretion whether or not to include it in the record of that application for consideration by the examining attorney.
In petitioning for a Reexamination or Expungement proceeding, the petitioner must verify the elements of a reasonable investigation the petitioner conducted. The Director has absolute discretion whether or not to institute a Reexamination or an Expungement proceeding, and may do so on the Director’s own initiative. The registrant may appeal an adverse decision in such a proceeding to the Trademark Trial and Appeal Board (TTAB), and if affirmed, to a higher tribunal.
2. This Act also included some other provisions:
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- Shortened Response Deadlines. Although the normal time for a trademark applicant to respond to an Office Action is 6 months, the Director may issue regulations establishing for some issues a shorter response deadline but not less than 60 days. The applicant may request an extension of the shortened deadline for the full 6 months upon payment of an official fee.
Practical Tip: You should be prepared to respond to an Office Action more quickly when you are advised that the response time has been shortened to less than 6 months in order to avoid the extra expense of requesting an extension of the response deadline. - Irreparable Harm. A plaintiff must be subjected to irreparable harm in order to obtain a preliminary or permanent injunction. Although a presumption of irreparable harm had been the established law in most jurisdictions, a few more-recent trademark cases questioned or rejected this presumption because the U.S. Supreme Court had rejected this presumption in a patent case. eBay v. MercExchange, LLC, 547 U.S. 388 (2006).
Commentary: The rebuttable presumption of irreparable harm appears again to be uniformly in place for those seeking injunctive relief in a trademark case alleging infringement, dilution or cyberpiracy.
Practical Tip: You can guard against an attempt to rebut the presumption of irreparable harm by keeping a log of calls, or a file of any written materials, in which the press or public make an adverse comment about your trademark, product or service as a result of an unauthorized use. - USPTO Review of TTAB Decisions. The Director of the USPTO will have the authority to modify or set aside a TTAB decision.
Commentary: This is a technical change to avoid application to the trademark tribunal of a patent decision that held the corresponding PTAB tribunal to be unconstitutional. Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019), currently pending before the U.S. Supreme Court.
- Shortened Response Deadlines. Although the normal time for a trademark applicant to respond to an Office Action is 6 months, the Director may issue regulations establishing for some issues a shorter response deadline but not less than 60 days. The applicant may request an extension of the shortened deadline for the full 6 months upon payment of an official fee.
COPYRIGHTS
Small Copyright Claims
Small-Claims Enforcement (CASE) Act.
Before June 25, 2022, the Copyright Office is to establish a Copyright Claims Board composed of three copyright experts to be known as Claims Officers. This will be a voluntary alternative to adjudicate small claims for infringement or noninfringement, or for the abuse of the website takedown procedures of the Digital Millennium Copyright Act (DMCA). A case must be brought within 3 years of the claim’s accrual. The award of actual damages, profits, or statutory damages is not to exceed $15,000 per infringed work (as opposed to the current statutory limit of $150,000 per work), and a total of $30,000 in any proceeding.
Commentary: This is intended to allow individuals and small businesses to assert small claims without an attorney. Concern has been expressed that abusive small claims may be asserted, the defendant will have only sixty days to opt out of a case, the right to appeal to a court or to have a jury trial is limited, and the creation of this quasi-judicial body in the legislative branch may be unconstitutional.
Practical Tip: How this will work awaits regulations, but when the Board is up and running you should consider using it to bring small claims for a faster and more expedient way to rectify harm, and you should not ignore a notice that you are a defendant in such a proceeding if you may wish to opt out.
Felony Streaming
Protecting Lawful Streaming Act (PLSA).
Federal felony charges, up to 3-10 years imprisonment and fines, may be brought against a digital service willfully streaming unlicensed copyrighted works, for commercial advantage or private financial gain, and with no other commercially significant purpose.
Commentary: This change from a misdemeanor to a felony is aimed at criminal services streaming pirated material. However, concern has been expressed that it may have a chilling effect on the everyday users of streaming services.
CAUTION. The Act contains very detailed provisions and will be supplemented by regulations. You should consult the Act rather than relying on this summary. The copyright provisions of the Act are on pp. 994-1019, and the trademark provisions are on pp. 1019-1029.
For further information contact William M. Borchard or your CLL attorney.