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Trademark Modernization Act Becomes Law: Establishes New Procedures to Remove Deadwood Registrations, Restores Presumption of Irreparable Harm, and Protects the Independence of the Trademark Trial and Appeal Board

Reported by Theodore Davis Jr. and Rita Weeks on JDSupra

The Trademark Modernization Act (TMA), which will become effective starting December 27, 2021, introduces significant amendments to the Lanham Act intended to modernize trademark examination procedures. Additionally, the TMA clarifies the standard for obtaining injunctive relief in cases under the Lanham Act and thereby resolves a circuit split by restoring the rebuttable presumption of irreparable harm in jurisdictions that had previously rejected it. Lastly, the TMA added amendments to the Lanham Act intended to “immunize the Administrative Law Judges of the Trademark Trial and Appeal Board against challenges to its independence under the Appointments Clause of the Constitution.” As Theodore David Jr. and Rita Weeks explain, the TMA provides the USPTO with greater flexibility in setting its office action response deadlines. Furthermore, the legislation creates new ex parte procedures aimed at clearing “deadwood” from the USPTO register.   

The TMA addresses these issues by authorizing two new mechanisms targeting deadwood on the USPTO’s trademark registers. The first, ex parte reexamination, would permit challenges to use-based registrations issued under Section 1(a) of the Lanham Act, or, in other words, registrations whose owners averred under oath during the application process that their marks were used in commerce. Such an averment may have been included in the application itself or, alternatively, as part of a statement of use. This mechanism would allow the USPTO to reexamine the accuracy of the registrant’s averment of use as of the filing date of that averment. It would not be available once a targeted registration has passed its fifth anniversary.

The second, ex parte expungement, would allow challenges to marks that have never been used in commerce. It would primarily target registrations issued under either Section 44(e) or Section 66(a) of the Act. It also would be unavailable to challengers after the fifth anniversary of a registration’s issuance.

Although the TMA provides significant changes to U.S. trademark law, certain issues still remain to be clarified through judicial action and administrative rulemaking.

One vet’s GI Bill fight could win benefits for millions of other students

Reported by Leo Shane III for Military Times

Jim Rudisill’s five-year legal battle with the Department of Veterans Affairs may soon be coming to an end. The dispute concerns a proposal to open an extra year of education benefits for veterans who have used up their post-9/11 GI Bill benefits but still have some eligibility left under the Montgomery GI Bill program. As Leo Shane III explains, under the current law, VA officials make students give up eligibility for the latter when they register to begin using the former program. While Rudisill has received favorable rulings from the lower courts, the case is currently in front of the U.S. Court of Appeals for the Federal Circuit.

Under existing federal statute, any government higher education payouts are capped at 48 months. So, veterans who use up their post-9/11 GI Bill program could get 12 more months of money for school under the court ruling.

Veterans Affairs officials have argued in court that using both benefits amounts to double-dipping on federal benefits, since the education funding is coming from the same source (the VA budget).