The coronavirus-relief and spending bill signed into law on December 27, 2020, included numerous revisions to the intellectual property laws. Many of these revisions recently took effect.
Trademark Modernization Act
The Trademark Modernization Act made a number of revisions to the processes of the Patent and Trademark Office (PTO) and the Trademark Trial and Appeal Board (TTAB). Regulations implementing this act went into effect on December 18, 2021.
The new Act codifies the existing procedure for third parties to submit letters of protest against registration of a mark, along with evidence supporting refusal of registration. Evidence can relate to any ground on which an examiner could refuse registration.
Two new relatively simple and inexpensive procedures for cancelling registrations have been authorized:
• The new “expungement” procedure allows third parties to request cancellation of a registration on the grounds that the mark was never used in commerce on or in connection with some or all of the goods or services recited in the registration.
• Reexamination of a registration can be requested on the basis that the mark wasn’t in use in commerce on or in connection with some or all of the goods or services recited in the registration on or before use was alleged.
The only options previously available were adversarial processes through the TTAB or federal district court.
In addition, the Act makes it easier for a party to obtain a permanent injunction by providing for a rebuttable presumption of irreparable harm after likelihood of confusion has been proved. This resolves a split among circuit courts as to whether such a presumption applies.
The Trademark Modernization Act also allows the USPTO director to set different deadlines to respond to a trademark office action.
Applicants have six months to respond to an office action, but the director was authorized to set regulations changing the deadline to any time within a range of 60 days to six months
The time for responding to an Office Action will remain six months until December 1, 2022, when it will be shortened to three months. Applicants will have the option to extend the deadline for an additional three months for a $125 fee.
Copyright Small Claims Court
The Copyright Alternative in Small-Claims Enforcement (CASE) Act created a Copyright Claims Board within the U.S. Copyright Office. This board, which will be similar to a small-claims court, will hear claims of copyright infringement, actions for declarations of noninfringement, and abuses of the Digital Millennium Copyright Act (DMCA) takedown procedures.
Damages are capped at $15,000 per claim or $30,000 for all claims, not including any attorneys’ fees and costs that may be awarded. Up to $5,000 in attorneys’ fees may be awarded upon a showing of bad faith conduct, with higher awards possible in “extraordinary” circumstances.
The proceedings will be more streamlined than in federal court. There will be no formal motion practice and no depositions without good cause, though limited written discovery will be permitted. Parties will be allowed to participate remotely and without an attorney.
Participation in board proceedings is voluntary. A defendant will have 60 days to opt out, in which case the plaintiff would need to file suit in federal district court. Board decisions can be challenged in court only in specific limited circumstances.
The Copyright Office had one year to get the Board up and running, but the Act gave the Register of Copyrights the authority to obtain a six-month extension for “good cause.” She has done so. Plans are to have the Board operating sometime in the spring of 2022.
Please feel free to contact us if you have any questions about the above or about protecting, registering or enforcing your intellectual property.
Photo by Louis Velazquez on Unsplash
