Significant Changes in Trademark Law That Could Affect Your Business

New Rules and Procedures Intended to Aid Trademark Owners

In today’s business world dominated by a proliferation of internet companies, acquiring rights to valuable trademarks and protecting them against infringement has been a daunting, often complicated and frequently expensive undertaking.  This has been particularly true for trademark owners initiating and maintaining a civil trademark infringement action in federal court.  However, some of these issues may be abated to some degree by the recent enactment of the Trademark Modernization Act (the “TMA”). The TMA modifies the existing version of the Lanham Act of 1946, the defining federal trademark law.

The TMA was signed into law by former President Trump on December 27, 2020.  The TMA is generally viewed as the most significant change to the Lanham Act in thirty years.  Among the changes, the TMA:  (1) eliminates from the U.S. Trademark Office Registry fraudulent or “deadwood” registrations for trademarks no longer in use in interstate commerce that might have blocked registrations for later-filed trademark applications; (2) cancels registrations for trademarks not in use in interstate commerce for a period of three years following the date of the registration; and (3) revitalizes and clarifies the former rule followed by many federal courts that provides when a plaintiff’s protected trademark was infringed by a defendant, the plaintiff was presumed to suffer irreparable harm and would have no adequate remedy at law to protect the plaintiff from further infringement while the lawsuit was on-going.   In 2006, the Supreme Court rejected that presumption which remained in effect until enactment of the TMA.

Because of these important changes afforded by the TMA, businesses now have additional, powerful enforcement mechanisms to protect their valuable trademark rights from infringement through both the U.S. Trademark Office and litigation in federal court.

This article provides a cursory overview of recent changes to the Lanham Act.  It further underscores the imperative necessity to obtain the advice and competent representation of legal counsel with experience and expertise in this complex, complicated, and specialized area of law.  Failure to do so can result in serious but potentially avoidable financial and legal consequence. 

Andrew Zulieve is an attorney with Skelton Taintor & Abbott.  He has thirty years of experience in all matters of Intellectual Property, Business, and Contract law and litigation in all courts.

This article is not legal advice but should be considered as general guidance in the area of intellectual property law.  Andrew Zulieve, and Jordan Payne Hay, are intellectual property law attorneys; others in the firm handle business and other matters.  You can contact us at 207.784.3200.

Since 1853, Skelton Taintor & Abbott has provided a full range of high-quality legal services to the individuals, companies, and municipalities of Maine. The firm’s main office is located in Auburn and in January 2019, a mid-coast office was opened in Waldoboro.