by: Tuong Pham
On September 9, 2020, the House Judiciary Committee approved the Trademark Modernization Act of 2020. The Trademark Modernization Act of 2020 Bill (H.R. 6196) was sponsored by US Rep. Hank Johnson (D-GA) for two purposes. The first purpose deals with allowing for an accelerated process to challenge never used registered trademarks. The act seeks to allow third parties to submit evidence during examination of trademark applications including evidence that a mark is not in use. Additionally, the Bill creates new ex parte procedures for expungement and reexamination to cancel trademarks not in use.
The second purpose is to protect consumers by making it easier to secure a preliminary injunction for trademark owners by creating a rebuttable presumption of suffering irreparable harm. The ease of preliminary injunction seeks to prevent consumers from further being misled about the source of a good or service.
The Bill was approved with important amendments. The first important amendment introduced by US Rep. Jerrold Nadler (D.N.Y.), gives the PTO director authority “to reconsider and modify or set aside” decisions of the Trademark Trial and Appeal Board (TTAB). The amendment could likely be seen as an attempt to get ahead of the ruling of Arthrex Inc. v. Smith & Nephew Inc. In Arthrex, the Federal Circuit found that PTAB judges were unconstitutionally appointed. The court found that PTAB judges were principal officers and their appointment violated the Appointment Clause. Although there exists some ambiguity if the ruling applied to TTAB judges, it is likely that it would because both sets of judges are very similar in nature. The amendment follows the ruling of Arthrex by taking power away from the finality of the TTAB judges’ decisions. The ultimate power for trademark decisions would reside now with the PTO director to overrule any decision of the TTAB.
Another amendment added to the Bill addressed the time during which ex parte expungement proceedings may be initiated. It allows a third party to request review of a registration on the basis that the mark was never in use on some or all of the goods or services listed. It changed the required time to between 3 to 10 years after the registration was issued. This amendment is meant to reduce the number of fraudulent trademarks registered. If the Trademark Modernization Act of 2020 should pass both Houses of Congress and become law, trademark owners should have increased incentive to keep detailed records of use in commerce on all goods included in their registrations.
 Trademark Modernization Act of 2020 https://hankjohnson.house.gov/sites/hankjohnson.house.gov/files/documents/TM%20Act%20-%20One%20Pager.pdf
 Kyle Jahner, Trademark Bill Advances with Agency Powers to Reverse Board https://www.bloomberglaw.com/document/XEKLGKDK000000?bna_news_filter=ip-law&jcsearch=BNA%2520000001747887da4dab7eff8791d90001#jcite
 941 F.3d 1320 (Fed. Cir. 2019).
 Trademark Modernization Act Takes One Step Forward, https://www.lexology.com/library/detail.aspx?g=f5120f37-2d3a-4a02-9927-7a2ec31e93fc