Rep. Johnson Praises Passage of Trademark Modernization in Judiciary Markup

September 9, 2020
Press Release

WASHINGTON, D.C. – Rep. Hank Johnson (GA-04), Chairman of the Subcommittee on Courts, Intellectual Property and the Internet, voted today on an historic markup in House Judiciary Committee of The Trademark Modernization (TM) Act, a bipartisan, bicameral bill that provides new procedures to ensure that the United States maintains a robust trademark system that minimizes barriers to entry and properly protects both consumers and brand owners. 

Congressman Johnson is the original sponsor of the bill. The bill now goes before the full House for a vote.

“Trademarks contribute significant value to the U.S. economy,” said Congressman Johnson, when the bill was introduced in March. “It’s important that false and fraudulent statements made in trademark applications not serve to block legitimate market entrants — particularly small businesses — seeking trademark registrations. The Trademark Modernization Act gives the Patent and Trademark office important tools to address and combat these fraudulent practices, and to protect good-faith actors in the trademark system. I am pleased to have worked with Representatives Nadler, Roby, and Collins, and Senators Tillis and Coons on this important effort.”

“Consumer protection is also a key focus of the trademark system. A well-functioning trademark system allows consumers to rely on trademarks to know the source of the products they buy. That is why this legislation clarifies that when a trademark violation is proven in court, a rebuttable presumption of irreparable harm exists. In many trademark cases, without injunctive relief, the risk that consumers will be confused is high,” said Congressman Johnson.

The TM Act would:

  • 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 the authority of the USPTO Director to reconsider decisions of the Trademark Trial and Appeal Board. 

A copy of the full bill text, as amended, can be found here.

A one-pager on the bill can be found here.

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