This is an overview of the Trademark Modernization Act and the CASE Act. These are two initiatives that are part of the COVID 19 relief stimulus and spending package, Consolidated Appropriations Act, 2021.
Recent Changes in Trademark and Copyright Law Due to Consolidated Appropriations Act, 2021
1. Sarah Kapelner
February 17, 2021
Recent Changes to Trademark and
Copyright Law Due to Consolidated
Appropriations Act, 2021
2. www.mstfirm.com
Overview
• Consolidated Appropriations Act, 2021 resulted in
two bills bringing changes to trademark and copyright
law
• Both bills signed into law on Dec 27, 2020
• Trademark Modernization Act
• Effective December 27, 2021 and apply to any mark registered on, before or
after
• CASE Act
• Copyright Office has one year from enactment to establish CCB
3. www.mstfirm.com
Trademark Modernization Act
• Changes to the Law
• Allows third parties to submit evidence to the USPTO during trademark
application process to encourage Office to refuse registration on the grounds that
claims of use are inaccurate - Third Party Pre-Issuance Submissions Program
• Allows third parties to submit evidence in ex parte re-examination and
expungement proceedings to cancel registrations in whole or in part for non-use
• Plaintiffs seeking an injunction entitled to a rebuttal presumption of irreparable
harm2
• Discretionary Shortened Response Deadline
• Implications
• Immediate impact —> need to ensure portfolios are not subject to new challenge
tools
• Injunctions under the Lanham Act1 would be more attainable = increase in
infringement actions
4. www.mstfirm.com
Trademark Modernization Act Cont.
• Expungement1
• Address bad faith filings and clutter
• Gives Director authority to cancel unused registrations
• Reexamination
• For marks that were not used in commerce when registrant
submitted declaration of use
• Appeals
• TTAB or CAFC
5. www.mstfirm.com
Trademark Modernization Act Cont.
• Discretionary Shortened Response
Deadline
• Current: 6 months from issuance to respond to OA
• New: As early as 60 days after issuance
• Failure to respond results in abandoned application unless
showing delay unintentional
• Extensions of time available for fee
6. www.mstfirm.com
CASE Act (Copyright Alternative in Small-Claims Enforcement Act)
• Changes to the Law
• Quasi-judicial tribunal
• Establishes a small claims court (<$30k/case) for copyright infringement
claims
• Implications
• Easier for artists to enforce their rights
• Potential for abuse by copyright trolls seeking settlement dollars
• Appeals
• Request re-consideration from CCB
• If CCB denies request —> Register of Copyrights to review for abuse of
discretion1
• Appeal to Federal District Court in limited circumstances
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Questions?
Editor's Notes
1. COVID 19 relief stimulus and spending package - two IP related bills
Due to the presumption of irreparable harm
Upon a finding of a violation or likelihood of success on the merits. After eBay (2006) courts were divided on whether proof of likelihood of confusion is sufficient not establish both likelihood of success and irreparable harm or if irreparable harm needs to be proven independently -> so need only to prove liklihood of success on the merits and get the rebuttal presumption of irreparable harm
A person does not need standing unlike with TTAB proceedings. Anyone can petition. Both have estoppel. Expungement can be appealed to the TTAB
Discretion of examining attorney to issue OAs with shorthand response deadline
Petition to revive
Three member copyright claims board CCB functions essentially as a small claims court
Parties voluntarily participate in hearing before the board with option to pursue case in a different court. Failure to opt out within 60 days —> party loses the opportunity to have the dispute decide by a court and waives right to a jury trial
1. Review to federal court in cases of fraud, abuse of discretion, default or failure to prosecute where excusable neglect was the cause of the default or failure to prosecute
