What's New in Trademark Law, 2018 to 2021

Stay up to date on what's happening in U.S. trademark law!

** LEGAL UPDATE **

Here are some of the most important recent developments in U.S. law concerning trademark protection:

Congress Passes the Trademark Modernization Act

The federal Trademark Modernization Act (TM Act), passed by Congress in late 2020, provides three changes to trademark law:

  • It sets the evidentiary burden for obtaining an injunction. The TM Act resolves a circuit split by providing for a presumption of irreparable harm when a party demonstrates likelihood of confusion, making it easier for some parties to obtain an injunction against an infringer.
  • It changes some procedures for trademark owners at the USPTO. Third parties who object to an application can now submit evidence if it's connected to a ground for refusal. The TM Act also provides Examining Attorneys with flexibility in setting response times, including deadlines shorter than six months.
  • It establishes procedures for cancelling fraudulent and "deadwood" registrations. To address a flood of fraudulent foreign trademark applications, Section 1 of the Lanham Act has been amended to include a process for submitting a letter of protest against registration of a mark. The TM Act also establishes an "expungement " procedure that will allow third parties to seek cancellation of a registration on the grounds that the mark was never used with the claimed goods or services. At the same time, the TM Act permits cancellation if the mark has never been used in commerce. Finally, the TM Act creates a system for ex parte reexamination of a registration on the basis of nonuse.

The USPTO has passed regulations implementing the TM Act, which take effect on December 18, 2021.

Supreme Court Finds That a Generic Term Combined With ".com" Is Not Always Generic

Until 2020, the USPTO had a per se rule against trademark registration for a generic term combined with ".com," concluding that it was generic. Following this rule, a trademark examiner rejected registration for BOOKING.COM for a travel booking company.

The Supreme Court, however, struck down the rule that ‘generic.com' terms are incapable of identifying a source. The Supreme Court concluded that, "Because "Booking.com" is not a generic name to consumers, it is not generic."

The takeaway: "Whether a compound term is generic turns on whether that term, taken as a whole, signifies to consumers a class of goods or services." (USPTO v. Booking.com B.V., 140 S. Ct. 2298 (2020).)

For more information on this ever-changing legal topic, see the Trademark Law section of Nolo's website.