The 5,593 page Consolidated Appropriations Act, 2021 (“Act”) that Congress passed in the days before the holiday is largely touted as a government spending bill. The media has focused on the economic stimulus components of the bill. Digging deeper into the bill reveals its potential impact on American intellectual property issues – specifically in the Trademark Modernization Act of 2020 (“TM Act”) and the Copyright Alternative in Small-Claims Enforcement Act of 2020 (“CASE Act”).
The TM Act has the potential to impact nearly all aspects of trademark law. From an application and registration perspective, it would allow third parties to submit evidence relevant to a ground for refusal of a trademark application and establish an ex parte process for expunging trademark registrations when the mark is not actually used in connection with the recited registered goods or services. The purpose of these provisions appears to be to “declutter” the register.
From a litigation perspective, the TM Act resurrects and/or realigns a “rebuttable presumption of irreparable harm upon a finding” of infringement, which became unclear as the Courts interpreted SCOTUS patent precedent which does not allow for the presumption. A presumption reduces the evidentiary burden and burden of persuasion on a trademark owner seeking an injunction, making injunctions more likely if the Act is signed into law.
There are also copyright provisions in the Act. The CASE Act, previously discussed here, establishes a small claims court within the Copyright Office to hear infringement disputes valued under $30,000. The CASE Act establishes a Copyright Claims Board staffed by Copyright Claims Officers assisted by Copyright Claims Attorneys. The Copyright Claims Board is empowered to award monetary relief. The Copyright Claims Board has the power to require a party to seek certain conduct only if “a party agrees.” Similar to procedures in the Patent and Trademark Office, the proceedings are assumed to “take place by means of written submissions, hearings and conferences . . .” and most evidence is received and admitted “without application of formal rules of evidence.” A final determination from the Copyright Claims Board is intended to “preclude relitigation before any court or tribunal . . . of the claims and counterclaims asserted and finally determined. . .”
Once the Act is signed into law, it is more likely that a Court will grant injunctive relief to brand owners than before the Act. The changes to processes in the Trademark and Copyright Offices will take longer to have an impact on intellectual property portfolios, but should provide efficient options for resolving certain types of disputes.