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Amendments to the Lanham Act

Tyler Hampy


2000: Restructuring of the U.S.P.T.O. In 2000, there were substantial changes to the structure and administration of the Patent and Trademark Office. One important structural change was the separation of the patent and trademark functions into separate operating units within the PTO. The PTO implemented a new position, which was titled the “Director of the Patent and Trademark Office.” The Director is appointed by the President of the United States with the advice and consent of the Senate. The Director appoints two Commissioners to five year terms: a Commissioner for Patents and a Commissioner for Trademarks. The two Commissioners serve as the CEO of each of the two branches of the PTO.

2003: U.S. Implementation of the Madrid Protocol. In 2002, the United States passed legislation which became effective one year later. On November 2, 2003, the United States became a member of the Madrid Protocol system. On that date, the new Lanham Act §§ 60 to 74, known as the Madrid Protocol Implementation Act (“MPIA”), became effective. The Protocol facilitated the registration of a mark in several nations while reducing the paperwork and expense of obtaining and maintaining the registration of a mark in several countries.

2006: Trademark Dilution Revision Act. In 2006, Congress made substantial changes to the scope of the anti-dilution law in terms of both validity and liability. The amendments were drafted by a special committee of the International Trademark Association. The statute was changed to require only a likelihood of dilution rather than actual dilution of the famous mark. The amendments also expanded the scope of marks that qualify as famous and eligible for protection. The amendments also defined dilution by blurring, created a multi-factor list of factors to determine blurring, and made it clear that a nontrademark use cannot dilute.trademark-250x250[1]

2008: Prioritizing Resources and Organization for Intellectual Property Act. The legislation known as the PRO-IP Act amended several parts of the Trademark and Copyright laws to increase damages and penalties for counterfeiters. For example, Lanham Act § 34, 15 U.S.C.A § 1116 doubled the range of statutory damages for nonwillful counterfeiting and doubled the maximum for a willful violation. Also, the criminal sanctions for counterfeiting were changed by adding increased penalties if the defendant knowingly or recklessly caused or attempted to cause serious bodily injury or death resulting from the counterfeit goods.

2008: Appointing Administrative Trademark Judges. Lanham Act § 17, 15 U.S.C.A. § 1067 was amended to provide that Administrative Judges of the Trademark Trial and Appeal Board (“T.T.A.B.”) would be appointed by the Secretary of Commerce in consultation with the Director of the USPTO, rather than appointed solely by the Director. This was done as a protective measure because prior to the amendment Administrative Judges in the USPTO were unconstitutionally appointed by a federal official, the Director of the USPTO, rather than the head of a department, such as the Secretary of Commerce.

2010: Technical Amendments and Correcting Errors in Procedures for Madrid Protocol Extensions of Protection. In 2010, the Lanham Act was again amended to ensure that U.S. registrations were procedurally in line with the Madrid Protocol Extensions of Protection. Lanham Act § 71, 15 U.S.C.A § 1141kwas amended to correct an erroneous omission of grace periods for filing an affidavit of use and to correct the erroneous omission of a provision for correction of deficiencies in an affidavit of use. Another amendment provided that the filing of the affidavit of continuing use in the name of someone other than the “holder” or “owner” is a deficiency that may be cured even after the grace period expired. Additionally, there was an amendment that replaced the term “registrant” with “owner” to ensure consistency with other sections of the Lanham Act.

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