The Stimulus May Modernize Intellectual Property

On December 27, 2020, former President Trump signed a wide-ranging bill, “The Consolidated Appropriations Act of 2020,” into law. While we all know about the stimulus checks that resulted from that legislation, there was something else with a big impact in the legislation. The new law also contained the Trademark Modernization Act (“TM Act”) and the Copyright Alternative in Small-Claims Enforcement Act (“CASE Act”). These laws will go a long way to update intellectual property law procedures in the U.S.

The Trademark Modernization Act

The TM Act seeks to update and speed up the trademark registration process, including dealing with still active trademarks that aren’t in commercial use. Some of the most important changes include:

• Third-party Submissions: During the trademark evaluation process, third parties can now submit evidence related to a trademark’s refusal. The USPTO Director can now create procedures for considering this evidence.
• Flexible Response Period: During the examination process, if an examiner issues an action, the applicant has six months to respond. Now, the examiner can set a deadline between 60 days and six months, and the applicant can request an extension of up to six months for a fee.
• Ex Parte Cancellation: Right now, a third party can only try to cancel a trademark through litigation before the Trademark Trial and Appeal Board or a federal district court. This process is expensive and time-consuming. The law creates new procedures that will allow a third party to use an ex parte expungement or reexamination process.

The Copyright Alternative in Small-Claims Enforcement Act

The CASE Act creates a new small-claims court for copyright cases seeking damages under $30,000. Copyright claims are federal cases, which claimants must file in federal court. Taking a claim to federal court can be expensive and time-consuming for copyright owners. With the increasing popularity of the internet came increasing violations of copyrights and the CASE Act seeks to make the process of litigating a claim easier.

Under the CASE Act, copyright owners can use the new court to seek damages under $30,000, a declarative judgment of non-infringement, and pursue notices under the Digital Millennium Copyright Act. The CASE Act will likely increase copyright claims for businesses, particularly those that create, license, distribute, or host content.

If you need advice on intellectual property matters or need guidance on how new intellectual property laws will affect you or your business, contact Carrie Ward at 856-354-7700 or email her at cward@earpcohn.com.