Congressman Johnson’s Bipartisan, Bicameral Trademark Modernization Act Becomes Law

December 22, 2020
Press Release
Legislation That Combats Fraudulent Trademark Filings, Protects Consumers Passes in Omnibus

WASHINGTON, D.C. — Congressman Hank Johnson’s (D-GA) Trademark Modernization (TM) Act of 2020 (H.R. 6196/S. 3449), bipartisan, bicameral legislation to give the U.S. Patent and Trademark Office tools to address recent significant increases in fraudulent trademark filings became law today when it passed both Houses of Congress and was expected to be signed by the president as part of the 2021 Omnibus spending package.

The bill was introduced in March along with Congressman Jerrold Nadler (D-NY), Congressman Doug Collins (R-GA) and Congresswoman Martha Roby (R-AL), and Senator Thom Tillis (R-NC) and Senator Chris Coons (D-DE). 

In particular, the bill provides options to combat an influx of trademark applications from China that rely on doctored photographs to procure trademark registrations.  

The TM Act would also help to ensure that in trademark infringement cases, courts issue appropriate remedies to ensure that confusingly similar trademarks do not remain in the marketplace, because that can undermine a core function of the trademark system—to help ensure that customers can look at a trademark and reliably know who is selling them a given good or service. 

“The Trademark Modernization Act is the first significant update to U.S. trademark laws in some time,” said Congressman Johnson (GA). “The Lanham Act was enacted in 1946. It is critical that we update the law to respond to contemporary concerns when they arise.”

“Consumers and brand owners rely on trademark laws for confidence in the products they buy and sell.  I am pleased to have worked with Representatives Nadler, Collins, and Roby, and Senators Tillis and Coons on this bi-partisan effort to combat fraud in the trademark system, and to ensure that brand owners and consumers are properly protected under the law,” said Congressman Johnson. 

“Consumers rely on trademarks to purchase products and services from sources they trust,” said Sen. Chris Coons (DE). “I am concerned that the recent flood of fraudulent trademark filings, many of which originate in China, have frustrated legitimate branding efforts by U.S. companies. Meanwhile, owners of trademarks for authentic products face unreasonable hurdles when trying to block the use of confusingly similar marks that would mislead the public – including dangerous counterfeit products from China. I am proud that Congress passed this bipartisan, bicameral bill that will address both of these problems and modernize our trademark system.”

“I applaud my colleagues in the House and Senate for including the Trademark Modernization Act in the year-end spending package and agreeing that modernizing the United States trademark system to better protect American consumers and brand owners is a priority,” said Sen. Thom Tillis (NC). “Earlier this year, I proudly co-introduced this bipartisan, bicameral legislation that will modernize the trademark system and make changes that protect small businesses and consumers across North Carolina. This much-needed update will help combat fraudulent trademark registrations coming from China and move our trademark system into the 21st century.”

The TM Act will:

  • Create new expedited ex parte cancellation procedures that would allow a new-market entrant or other third party to request cancellation of a trademark registration when the mark was never used or was not used before registration.  The new procedures offer options in addition to traditional inter partes cancellation, which is often a time-consuming and expensive process.
  • Codify additional trademark examination procedures, which gives the U.S. Patent and Trademark Office flexibility and additional authority to gather evidence during examination. 
  • Clarify that, notwithstanding the Supreme Court’s decision in a patent case, eBay, Inc. v. MercExchange LLC, a rebuttable presumption of irreparable harm exists for trademark violations.
  • Clarify that the Director of the Patent and Trademark Office has the authority to reconsider decisions of the Trademark Trial and Appeal Board.

A section-by-section analysis of the bill can be found here.

A one-pager on the bill can be found here

Text of the bill can be found here.

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