How the Trademark Modernization Act Will Affect Everyone

U.S. Trademark Modernization Act Signed Into Law | Jones Day

As part of an appropriations bill in 2020, Congress passed the Trademark Modernization Act (“TMA”). Parts of it took effect on December 27, 2020 when it was signed, but much of the rest of it will become effective on December 27, 2021. The USPTO is delaying implementation of the remaining changes until June 27, 2022. The TMA is designed to decrease the “deadwood” of registrations which have not been used in US commerce or have become abandoned. It also shortens the response times for office actions, clarifies the presumption of irreparable harm in trademark cases, and modifies how representation works at the USPTO. So, the TMA will affect everyone.

The TMA’s first change, effective December 27, 2020, clarifies that there is a presumption of irreparable harm in trademark infringement cases. Before the TMA, there was a circuit split on this issue. Now, it will be easier for everyone to obtain injunctive relief in an infringement case.

Third parties who want to bring information to the USPTO Examiner’s attention during trademark examination have long been able to file Letters of Protest. The TMA expands the grounds for doing so. Now, essentially any grounds for opposition or cancellation of a trademark can now be grounds for a Letter of Protest.

The TMA also introduces two new methods to petition the USPTO Director to seek cancellation of registrations. These are much simpler than formal cancellation proceedings before the Trademark Trial and Appeal Board (“TTAB”).

The first petition method, Ex Parte Re-Examination, must be filed in the first five years of registration. After a reasonable investigation into the use, the petitioner can claim that the mark was actually not used in commerce as of certain relevant dates claimed by the registrant.

The second petition method, Expungement, can be filed between three to ten years after registration if the mark has never been or is not currently in use, in whole or in part. A reasonable investigation is required. Until December 27, 2023, however, a proceeding may be requested for any registration at least three years old, regardless of the ten-year limit.

Both petition methods will allow the registrant an opportunity to refute the allegations, with a decision then being made by the Director. Registrants can appeal unfavorable decisions to the TTAB.

Currently, attorneys are recognized as representatives during examination and while maintenance documents are being filed. Representation is deemed to end at registration, although the attorney is still listed as attorney of record. The TMA will now require attorneys to formally withdraw from representation if they no longer wish to be recognized as representatives at all times.

The TMA will allow shorter response times to office actions, but those changes will be implemented later, i.e., by June 27, 2022. The proposed rules indicate that the periods could be as short as 60 days, with an extension available up to six months if needed.

For more information on changes coming to trademark practice as a result of the TMA, we invite you to attend an LG Webinar presented by Kevin Thompson on November 10, 2021, at 12:00 PM. This 30-minute presentation will focus on the changes coming to trademark practice and how brand owners should prepare. To register, visit https://bit.ly/3lJqYx5.

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Predictive Scheduling Legislation: What You Need To Know To Avoid Costly Surprises

In approximately a dozen states and a number of smaller municipalities across the U.S., including Illinois and Chicago, initiatives have been introduced that would allow state and local governments to dictate how restaurants (and retailers) schedule their employees. Some view this approach as interfering with employers’ rights to control the workplace while others view it as a necessary tool to protect the rights of the food industry and other retail workers.  The impetus for the new rules – often referred to as predictive scheduling laws – emanates from the fact that workers often have very little ability to make adjustments to their work schedules in order to meet their responsibilities outside of work.  And unpredictable and unstable work schedules have been fairly well documented in the food service and preparation industries, as well as in retail and commercial building cleaning occupations.

Predictive scheduling laws and proposals generally include certain common provisions: (i) advance posting of schedules, (ii) employer penalties for unexpected schedule changes, (iii) record-keeping requirements, and (iv) prohibitions on requiring employees to find replacements for scheduled shifts if they are unable to work. In Congress, the pending Schedules That Work Act would require that schedules be provided in writing two weeks in advance with penalties for changes made with less than 24 hours’ notice.  As those changes are implemented, restaurant owners are finding that they must make significant adjustments to how they run their businesses in order to stay in business.

“On-call” or “predictive scheduling” activists argue that retail employers too often use scheduling practices that directly interfere with employees’ personal lives and ability to plan around their work hours, while others believe government intervention in the scheduling of employees through a one-size-fits-all approach intrudes on the employer-employee relationship and creates unnecessary mandates on how a business should operate.  Many in the food service industry are concerned that predictive scheduling legislation will impede employers’ need to adapt to changing conditions in a store, particularly small independently owned businesses that have limited staff and resources and may not be able to afford the penalties related to violations.  Some employees have also voiced concern that they could lose some of the flexibility that attracted them to the food service industry in the first place.

Following are a few common components of predictive scheduling legislation.

  • Employee Scheduling Requests.  Giving employees the right to make scheduling requests without employer retaliation.  Employers would be required to consider scheduling requests from all employees and provide a response. In some instances (for healthcare issues for example), the employer would be required to grant the request unless there is a bona fide business reason not to do so—e.g., an inability to reorganize work among existing staff or the insufficiency of work during the periods the employee proposes to work.
  • Shift Scheduling Changes.  Requiring employers to pay employees for a minimum of four hours of work or the minimum number of hours in the scheduled shifts, whichever is fewer, when an employee is sent home from work early without being permitted to work his or her scheduled shift.  In addition, if an employee is required to call in less than 24 hours before the start of a potential shift to learn whether he or she is scheduled to work, an employer could be required to pay the employee a premium, equivalent to one hour of pay.
  • Split shift pay. If an employee is required to work a shift with nonconsecutive hours with a break of more than one hour between work periods, an employer could be required to pay the employee a premium for that shift, equivalent to one hour of pay.
  • Advance notice of schedules. When an employee is hired, an employer could be required to disclose the minimum number of hours an employee will be scheduled to work. If, that minimum number changes, the employer could be required to give the employee two weeks’ notice of the new minimum hours before the change goes into effect. In addition, employers can be required to give employees their work schedules two weeks in advance and, if an employer makes changes to this work schedule with notice of only 24 hours or less, the employer could be required to pay the employee a premium, equivalent to one hour of pay.

In order to handle predictive scheduling mandates, business owners should explore software options and even retaining outside vendors that provide scheduling and labor management solutions.  A lack of training or understanding of predictive scheduling can be detrimental to a business’ bottom line since scheduling practices can have a dramatic impact on labor costs.

For further information regarding this topic, please contact:

Jonathan M. Weis at jweis@lgattorneys.com or 312-368-0100.

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