WASHINGTON — Reps. Doug Collins (R-Ga.), Ranking Member of the House Judiciary Committee; Jerrold Nadler (D-N.Y.), Chairman of the House Judiciary Committee; Martha Roby (R-Ala.), Ranking Member of the Subcommittee on Courts, Intellectual Property, and the Internet; and Hank Johnson (D-Ga.), Chairman of the Subcommittee on Courts, Intellectual Property, and the Internet introduced the Trademark Modernization (TM) Act of 2020 to address recent significant increases in fraudulent trademark filings. Sens. Thom Tillis (R-N.C.) and Chris Coons (D-Dela.) introduced the Senate companion today.

“Trademarks are intended to provide consumers with confidence in the products and services they’re purchasing and small businesses with protection for their products, but, currently, our trademark system is failing to give businesses the confidence they need. Bad actors, like individuals in China backed by the Chinese government, have taken advantage of vulnerabilities in our system, and as a result, hold possibly thousands of fraudulently trademarks obtained by deceiving the Patent Office. The Trademark Modernization Act will help provide small businesses with new cost-effective tools needed to fight fraud and block bad actors from illegally obtaining trademarks. This legislation ultimately will provide much needed relief for our small businesses, and it will give consumers peace of mind,” said Collins.

“Small businesses must have equal access to the trademark system. Trademarks are often a critical component of building a brand and a successful venture. This bill would help ensure that the robust U.S. trademark system will continue to function for all players in today’s fast-moving economy,” said Nadler.

“In a hearing last year, I heard testimony on issues pertaining to fraudulent registrations from overseas and the cluttering of the trademark registry. Trademarks play a vital role in boosting our economy, creating jobs, and providing trust to American consumers. Millions of Americans rely on trademarks daily to purchase products from sources they depend on, and consumers should feel confident when making these purchases. This piece of legislation provides resources that limit fraudulent trademarks and help to declutter the registry,” said Roby.

“Trademarks contribute significant value to the U.S. economy. 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. 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 Johnson.

“The United States trademark system is long-overdue for an update to ensure it protects American consumers and brand owners,” said Senator Tillis. “The bipartisan, bicameral legislation would modernize the trademark system and make changes that protect small businesses and consumers across North Carolina. Recently, there has been a flood of fraudulent trademark registrations coming from China that harm American consumers and businesses by making it difficult for new businesses to obtain trademark protection for their commercially used marks. I am proud to introduce this much needed updated with Senator Coons and Representatives Nadler, Collins, Roby and Johnson, and I will work to build bipartisan support so we can combat fraudulent trademark registrations coming from China move our trademark system into the 21st century,” said Tillis.

The Trademark Modernization 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.