Washington, D.C. – Today, House Judiciary Committee Chairman Jerrold Nadler (D-NY) delivered the following opening remarks, as prepared, during the markup of H.R. 6196, the Trademark Modernization Act of 2020:
"H.R. 6196, the Trademark Modernization Act of 2020, is a bipartisan bill that will modernize trademark law to reflect technological advances, improve the efficiency of trademark registration, and address recent threats to the proper functioning of the U.S. trademark system.
"I am pleased to be an original co-sponsor of the bill, together with my colleagues on both sides of the aisle, IP Subcommittee Chairman Johnson, IP Subcommittee Ranking Member Roby, and Mr. Collins, the former Full Committee Ranking Member.
"A well-functioning trademark system supports a robust and successful commercial economy.Trademarks enable producers to build goodwill, and trademark protection prevents others from trading on that goodwill. By guarding against deception in the marketplace, trademarks also serve an important consumer protection function, which is especially critical today as electronic commerce commands a larger and larger role in the U.S. economic landscape.
"Federal trademark registration is an important component of protecting trademarks, and in turn in protecting U.S. companies and consumers. To function properly, the registration system must work for all entities, not just for large companies. For small and medium-sized businesses, it is especially important that the process of registering a trademark not be overly burdensome.Small businesses succeed when their brand recognition grows. And the heart of brand recognition is trademark protection.
"In recent years, it has become apparent that there are inefficiencies in the trademark registration process. It is also clear that marks have been registered that should not have been—either through inadvertent mistake or through fraudulent activity during the examination process.
"H.R. 6196 helps restore balance in the trademark system by creating new processes to allow even small business to challenge improper registrations through new, more efficient, and less costly ex parte cancellation proceedings. Clearing improper registrations from the trademark register allows those marks to be available again for use and registration by later, legitimate actors seeking to build their brand and their business.
"The bill also modernizes trademark examination practice by allowing the USPTO to set trademark examination deadlines that are more in concert with the availability of electronic communication today.
"And it codifies an existing practice of the Office that allows third parties to submit evidence to ensure that only those applications entitled to registration proceed out of examination.
"Additionally, for the trademark system to function properly, appropriate remedial relief must be available when a company’s trademark is infringed.Given the consumer protection function of trademarks—to prevent confusingly similar marks from coexisting in the marketplace—trademark law has historically recognized a rebuttable presumption of irreparable harm when trademark infringement is proven.
"That presumption was called into question after a 2006 Supreme Court decision in a patent case, and since that time a circuit split has developed over whether the presumption still applies in trademark cases.
"H.R. 6196 confirms that the historical practice of applying a rebuttable presumption of irreparable harm is the appropriate course for claims under the Trademark Act of 1946. This provision ensures that injunctive relief will be available in appropriate cases for parties prevailing on trademark claims.
"The changes made by this legislation would strengthen and modernize the trademark system and I urge my colleagues to support this important, bipartisan effort."