You may not have heard that the U.S. Trademark and Copyright Laws have been updated a bit. New for 2021 are a series of changes to the laws that may affect you as a creator or business owner.
On December 27, 2020, the Trademark Modernization Act of 2020 and the Copyright Alternative in Small-Claims Enforcement Act of 2020 were signed into law. Included in these laws are provisions designed to assist intellectual property owners in registering and enforcing their rights.
Here are a few highlights.
Rebuttable Presumption of Irreparable Harm – There has been some confusion among the federal courts in the various regional circuits regarding this presumption since the 2006 Supreme Court case of eBay Inc. v. MercExchange, LLC. To resolve the issue, Congress has written the presumption into the statute. This means that a showing of actual harm by presenting evidence thereof is not necessary when seeking an injunction against trademark infringement. Upon a showing of likely success in proving infringement, the harm is presumed.
Letter of Protest – Instead of waiting until a trademark has been published in the Official Gazette, third parties have a new option when they believe registration of a trademark will harm them. They may now submit evidence supporting a reason for refusing the trademark application during the examination process.
New Procedure to Challenge Registrations – Third parties may now submit a petition challenging a registration if (1) the mark has never been used in commerce on or in connection with some or all the goods or services identified in the registration, or (2) the mark was not used with some or all the goods or services on or before the relevant date.
Copyright Claims Board – Instead of filing all copyright infringement cases in federal court, there is a new option. Copyright owners may now choose to seek redress before the newly formed Copyright Claims Board. This option may prove far less time consuming and more cost efficient than federal court litigation. However, there is a provision which allows defendants the option of opting-out within 60 days of service of process. Doing so would force the case to be heard in federal court. Claims heard by the Board are limited to $30,000. There is no formal motion practice either and discovery is limited. Board decisions are not subject to appeal except for a clear error of law. Also, filing one’s claim before the Board will preclude a party from later litigating the claim in federal court.
In light of these changes, business owners with intellectual property should probably speak with their counsel regarding how they may be affected. For example, it may now be advisable to keep copious records regarding how one’s trademarks are indeed being used in all the ways identified in their registrations.
©2021 Albert F. Davis, Esq.
This law update is intended for general information purposes only. One should not consider the update legal advice or legal opinions relating to any specific facts or circumstances. An attorney-client relationship is not created by reading this update. Please feel free to contact A. F. DAVIS LAW for further information.