U.S. Rep. Doug Collins (R-GA) and U.S. Sen. Thom Tillis (R-NC) on March 11 introduced the bipartisan, bicameral Trademark Modernization Act of 2020 to address spiraling increases in fraudulent trademark filings.
“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,” said Rep. Collins, ranking member of the U.S. House Judiciary Committee. “This legislation ultimately will provide much-needed relief for our small businesses, and it will give consumers peace of mind.”
Sen. Tillis sponsored S. 3449 in the U.S. Senate with cosponsor U.S. Sen. Chris Coons (D-DE), while Rep. Collins cosponsored H.R. 6196 in the U.S. House with U.S. Rep. Martha Roby (R-AL) and bill sponsor U.S. Rep. Hank Johnson (D-GA).
“The United States trademark system is long-overdue for an update to ensure it protects American consumers and brand owners,” said Sen. Tillis. “The bipartisan, bicameral legislation would modernize the trademark system and make changes that protect small businesses and consumers.”
If enacted, the measure would amend the Trademark Act of 1946 to provide for third-party submission of evidence related to a trademark application; establish expungement and ex parte proceedings related to the validity of marks; and provide for a rebuttal presumption of irreparable harm in certain violation proceedings, according to the congressional record summary of the bill.
For instance, under the bill, newly created expedited ex parte cancellation procedures 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, according to a bill summary provided by the House Judiciary Committee, which said such new procedures would offer options in addition to traditional inter partes cancellation, which is often a time-consuming and expensive process.
“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,” said Rep. Collins. “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 U.S. Patent Office.”
Sen. Tillis agreed that there’s been a flood of fraudulent trademark registrations coming from China that make it difficult for new American businesses to obtain trademark protection for their commercially used marks.
“I am proud to introduce this much-needed update … and I will work to build bipartisan support so we can combat fraudulent trademark registrations coming from China and move our trademark system into the 21st century,” said Sen. Tillis.
Rep. Roby, ranking member of the Subcommittee on Courts, Intellectual Property, and the Internet, added, “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.”