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JONES DAY TALKS®: 75 Years of the Lanham Act and Changes in U.S. Trademark Law

Signed into law in July of 1946, the Lanham Act has, for 75 years, governed U.S. trademark, servicemark, and unfair competition matters. In this edition of the Jones Day Talks Women in IP series, Meredith Wilkes, Anna Raimer, and Carrie Kiedrowski discuss how trademark laws have changed and evolved since the Lanham Act’s implementation, and talk about recent cases relating to trademark dilution, internet domain names, and willful infringement. They also examine the significant changes that are part of the Trademark Modernization Act of 2020.

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Dave Dalton:

The Lanham Act is a federal statute that governs trademarks, service marks, and unfair competition. It was passed by Congress in July 5th, 1946, and then signed into law by President Harry S. Truman. That's 75 years, so happy birthday Lanham Act. But the Act's passage was just the beginning. Trademark laws have, in the decades since, been added and amended to address changes in technology, innovation, and other factors potentially affecting interests of trademark and service mark holders. In this edition of the JONES DAY TALKS® Women in IP series, Meredith Wilkes, Anna Raimer and Carrie Kiedrowski discuss recent landmark cases involving trademark dilution, internet domain names, and willful infringement. They'll also talk about the bold changes brought about by the Trademark Modernization Act of 2020. Stick around, this is going to be good. I'm Dave Dalton, you're listening to JONES DAY TALKS®.

Dave Dalton:

Meredith Wilkes co-leads Jones Day's global trademarks, unfair competition and copyrights group. She is the lead trial lawyer that has focused on high-stakes trademark, trade dress, trade secret, false advertising, and design patent litigation leading matters for global brands and federal and state courts throughout the United States for more than 20 years. Meredith also chairs the firm's Women in IP Initiative.

Dave Dalton:

Anna Raimer works with clients to design and implement worldwide trademark protection programs, strengthen their IP portfolios, and resolve domestic and international trademark disputes. She has significant experience managing international brands for clients, and assists clients in policing, enforcing, and defending their intellectual property rights worldwide. Anna is also co-author of O'Connor's Federal Intellectual Property Codes Plus, 2020-2021.

Dave Dalton:

And Carrie Kiedrowski has more than 16 years of brand protection and enforcement experience, and has had particular success in resolving online trademark infringement issues and in domain name dispute arbitration actions before the World Intellectual Property Organization. Carrie is lead pro bono trademark counsel for several global nonprofit organizations, such as Room to Read, in which underserved individuals receive literacy and educational support.

Dave Dalton:

Meredith, Anna, Carrie, thanks so much for being here today.

Meredith Wilkes:

Thanks for having us, Dave.

Anna Raimer:

Thank you, Dave.

Dave Dalton:

Interesting topic today. And Meredith, we've been doing Women in IP podcasts for going on three years now, but I think this program's a little different. What we're here to talk about is the lookout 75th birthday, if you will, of the Lanham Act. Now, the Lanham Act is the federal statute that governs trademarks, service marks and unfair competition passed by Congress July 5th, 1946. President Truman signed it into law and it took effect exactly one year later.

Dave Dalton:

Okay. So 75 years ago, Meredith here's where I'm coming from. I'm actually surprised it took that long because 75 years ago is not ancient history. There's a lot of commercial activity. Certainly there were trademark issues out there in the US economy, even if they weren't calling them that. So what happened, I guess, in 1946? Where'd the momentum come from? What prompted Congress to move on serious trademark legislation at that time? Where were we?

Meredith Wilkes:

So first off, Dave, I've got to say the Lanham Act's looking pretty good for 75. I don't know.

Dave Dalton:

Holding up pretty well. Although, there's been a nip and tuck here and there, we'll talk about in a minute, but mostly I agree. Sure.

Meredith Wilkes:

To be sure. Yeah, the Lanham Act was not signed into law until after World War II and Congress was a little bit busy, not able to get to what is near and dear to my heart and Carrie's heart and Anna's heart, for sure. And it's interesting because there were other trademark laws on the books prior to the Lanham Act that all met with various limitations or were even constitutional failures, quite frankly. In the reconstruction era, in the late 1800s, 1870s, we tried to have a federal scheme regulating trademarks and it was deemed unconstitutional because it relied on article one, section eight that speaks only to patents and to copyrights.

Meredith Wilkes:

And so, Fritz Lanham became bound and determined to get a federal scheme in place that regulated marks in part, because post new deal and then in particular post-World war II. This massive rise in consumerism and growth. And we started to see products being differentiated through advertising. And I think then from that you see a desire to protect both businesses and consumers. And so I think that's when we got motivated to get really moving and get something on the books after World War II.

Dave Dalton:

That makes sense. And people are starting to recognize the value of what we now consider a trademark of those things. It's like post war boom and consumerism certainly ties in well and that certainly makes sense. Madison Avenue wins again, I guess. All right. Let's talk about some key developments in U.S. Trademark law. There was the Federal Trademark Dilution Act. Now that didn't come until 1996. But before talking specifics, Meredith, we talked about these subjects in different podcasts before, but tell me what's the difference between trademark infringement and trademark dilution? What's the difference here?

Meredith Wilkes:

You're right, Dave. There is a difference. When we're looking at claims for trademark infringement, we are trying to protect the goodwill associated with a brand from deceptive use. The standard would be confusing similarity. Dilution on the other hand is talking about it a different concept, which is that the value of the brand is being diminished, not by a deceptive use, but purely by use. So to prevail on your dilution claim, you don't have to prove confusing similarity. You simply have to just prove use. And so, because that standard is a little bit lower, almost strict liability in the trademark world, it's reserved for a very special type of mark. And it has to be a famous mark to be able to bring a dilution claim. And since we're doing history here, it was interesting for me to learn that even though the federal dilution statute wasn't passed until 1996, it's actually been a product of state laws throughout the United States. And the earliest one that we can find was in Massachusetts in 1947. So the concept of dilution as a claim is much older than its inclusion in the Lanham Act.

Dave Dalton:

If I'm starting a soft drink company and I have a red and white label, white scripted lettering, and from a distance you're like, "Oh, that's Coca-Cola." Is that trademark dilution potentially? Or am I thinking of it-

Meredith Wilkes:

I think our good friends at the Coca-Cola company would definitely say that it is.

Dave Dalton:

They wouldn't like that. I was just in Atlanta recently. I'll tell you, Coca-Cola runs that town. It's something else. Okay, good example. Okay. But staying with the Dilution Act, this law would ultimately need to be rewritten by Congress after, forgive me for reading here, Moseley v. V Secret Catalogue, Inc. That was in 2003. Anna, tell us what happened there.

Anna Raimer:

Sure. Thanks, Dave. So that's a case in which Victoria Secret challenged the use of the mark, Victor's Little Secret, which was being used by the adult novelty store. And they challenged that based on dilution grounds. Now, at that time there was a circuit split. So it was whether there was an actual dilution standard that must be established, or whether there was a presumption of harm that arose from a likelihood of dilution standard. And the Supreme Court resolved that split in the Victoria Secret case by holding that actual dilution was required under the 1996 Act. So you actually needed this objective proof that there was an actual injury to the value of the mark, in order to have this claim for dilution.

Anna Raimer:

Now, as you mentioned, this led to an amendment of Lanham Act, one of these nips and tucks that you were talking about earlier, through the 2006 Trademark Dilution Revision Act. And by that amendment, all we need to show now is the likelihood of dilution rather than the actual dilution. So that amendment changed that decision, the Victoria Secret decision. One other thing I wanted to mention too that Act did, was to note that a relevant mark must be famous. So before you had this idea of niche fame for a trademark, but that amendment made clear that it needs to be a mark that's widely recognized by the general consuming public. Like one we would think of as a household name in order to assert a dilution claim.

Dave Dalton:

I need to be careful about throwing terms around that I'm not sure I'm using properly, but let's say you prove actual dilution, and maybe I'm getting to an area that's beyond the scope of this conversation, how do you prove damages as it were? Do they just make people stop? "Okay, stop doing that. You're diluting their trademark," or are there monetary damages sometimes?

Anna Raimer:

There can be monetary damages as well. I mean, certainly an injunction is what a lot of trademark owners would like to have and make sure that someone ceases using the mark, but you can show monetary damages as well.

Dave Dalton:

All right, real good. Let's go to Carrie for a second. Carrie, thanks again for being here today.

Carrie Kiedrowski:

My pleasure. Thanks, Dave.

Dave Dalton:

Another interesting development trademark law was the Anticybersquatting Consumer Act. Well, it rolls right off your tongue, ACPA. Now this is back in 1999. Internet was real new to most of us and I guess I'm dating myself, but I can... Firstly, I remember a time before the internet, but the internet was new. Talk about the potential issues with domain names and how that act came about, Carrie.

Carrie Kiedrowski:

Certainly. So talking about the '90s, it's really difficult for us to believe today, but then, very few companies actually had an online presence. And in the '90s, there was an explosion of registrations of famous marks. And a lot of individuals tried to capitalize on securing domain names that also corresponded to a company's brand or their trademark. So as time has gone on, it's no longer a luxury but it's a corporate necessity to have an online presence. Some domain names were being registered for the purpose of ransoming or hijacking them. So as the internet exploded, some very savvy individuals decided to register tons, hundreds of domain names that corresponded to famous brands. And so, the Anticybersquatting Consumer Protection Act gave another cause of action to basically try to stop that practice.

Dave Dalton:

For an obvious example, I couldn't go out there and cybersquat on Ford Motor or McDonald's probably. That's what we are trying to prevent, right?

Carrie Kiedrowski:

That's right. Exactly. And really within two weeks of the lobby and enacted in 1999, a couple of examples that most of us can relate to, the America's Cup team from New Zealand filed an ACPA action to recover, and recover meaning to have the domain name transferred to the rightful trademark owner, americascup.com. Harvard filed an ACPA action to recover Harvard-lawschool.com. And then, even the NFL filed an action under the ACPA to recover the nfl-today.com domain name. It's an act that provides for statutory damages ranging from 1,000 to 100,000 per domain name, and also the potential transfer or cancellation of a domain name. So it's really just another tool for trademark enforcement in the online sphere.

Dave Dalton:

Kind of makes you wonder. I mean, no one would have envisioned this, right? When trademark laws were being written even 1946 moving forward into the early '90s, no one thought about a domain name. Kind of makes you wonder what could be down the road. And a trademark law and mirror that I've taught dozens of times, it's always evolving, always changing, always surprising me at least, but kind of makes you wonder something that dramatic could be on the horizon and we don't even know about yet. So this is an interesting part of the law. Let's talk about trade dress cases. Meredith, I've heard that term. In fact, it's probably come up with some of our previous programs, but can you explain exactly what trade dress refers to?

Meredith Wilkes:

Sure, Dave. We have talked about trade dressing. Sometimes I like to refer to it, maybe I've said this to you before, as dressing up your trademark. Trade dress is a type of trademark. The broad scope of the Lanham Act reaches what we call trade dress. And it really encompasses the total image of a product or a service. And so, if you think about it in terms of some sort of visual attribute that indicates source. And so this is very, very broad. It can be colored, it can be shaped, it can be designed and it can be a combination of color, shape and design. But what's critical is that the elements cannot be functional and the owner has to demonstrate that the design or the color has acquired what we call secondary meaning, meaning that consumers have to associate it with the maker of stuff. And one of the more famous ones that we talk about all the time made by our friends down in Atlanta, that shape of the Coca-Cola bottle, that's the classic example of trade dress protection.

Dave Dalton:

What about the Tide box? I was doing laundry last night, but I was just saying that, that yellow, that orange, that just... I mean, you can see that box from 100 feet away, that's Tide, right? Is that an example of some renegade detergent manufacturer thought, "We're going to trick somebody or at least have them look at our product." They couldn't do that, right?

Meredith Wilkes:

Well, you raised so many interesting points with that question, Dave, as you always do. Color, of course is protected and can be protected as trade dress. The orange and blue is certainly distinctive. You recognize that from far, far away, right? And that's what brand owners are trying to do when they seek to protect their trade dress, right. They're trying to call the consumer's attention to their stuff on the shelf. And so you can do that with great combinations of color. There is a tension between brand owners and companies that we would call private labels. And you see this when you go into CVS or the grocery store where you see the branded product, and then right next to it, that picks up on some of the colors or some of the same shape, you see the private label product. So there is always that tension between the branded good and how much of the overall look, appearance, can somebody else use to draw your attention to their product instead. So it's evolving constantly and very exciting, very fun area of practice.

Dave Dalton:

And everybody's for... Well, I hope everybody's for fair competition and free markets, all that stuff, but you go into the pharmacy, right, and you see a very popular allergy medication. And then half a shelf over is a similar product and it's boxed almost identically. And I almost called you about this once by the way, Meredith. Seriously I did because I thought, what am I missing here? This just doesn't look like something that should happen, but this is trade dress law. So, all right. Let's talk about a specific case. Let's go to Carrie. Tell us what happened in Qualitex V. Jacobson.

Carrie Kiedrowski:

Sure thing. So in Qualitex versus Jacobson, Qualitex is the plaintiff here. And Qualitex used a green gold color for dry cleaning press pads, and the defendant Jacobson, their rival, began selling pads of a similar color. So Qualitex did not like this and they sued Jacobson, and they also registered a trademark for the green gold color. So interestingly, district court ruled in favor of Qualitex but the ninth circuit overturned this, basically saying that color was not registrable. But the Supreme Court in Qualitex versus Jacobson was having none of that, frankly. And then unanimous decision, the Supreme Court found that color could be a trademark as long as the color's non-functional, meaning that it can't serve an essential purpose of the article, the products or services. So colors are symbols. I thought maybe a couple other examples might be useful here. There's the red soles on shoes for Louis Vuitton and pink insulation for Owens Corning actually owns that. Wolf owns the red knobs on appliances.

Carrie Kiedrowski:

And we're all familiar, especially during the pandemic, with at-home deliveries. UPS owns the color brown for their trucks. One other thing I thought was interesting. So John Deere tried to register, well actually did obtain a registration for a color combination. So the John Deere tractors are of course, green and yellow. They couldn't register green alone because green was considered functional because it's really a symbol of vegetation, but they were successful in registering the green and yellow color. So that's just another example of how the Lanham Act has evolved over time, and now we have a protection for colors.

Dave Dalton:

Interesting. I want to go back to something you said a second ago, because Meredith used the term earlier. When you say functional, okay, green is functional, right? I guess it can't be functional to warrant protection. What does that term mean in this context, functional?

Carrie Kiedrowski:

Sure thing. And if Meredith you'd like to add anything, please do. But essentially, if some color is functional, that means it has some essential feature or role in the provision of services or the color of the product. Again, the example I gave regarding green, the green symbol is related to vegetation. So John Deere was not able to register the green alone. Meredith, do you have anything to add?

Meredith Wilkes:

Think you nailed it, Carrie. What the Supreme Court teaches us is that, as you've said, that functionality, that sort of element is met if either one, it's necessary. The claimed element is necessary to the use or purpose of the article or two, if it affects the cost or quality, right. Because as we were talking about earlier, there's this tension between giving somebody what is, could be a lifelong monopoly and for years and years beyond that versus enabling fair competition. And so, this becomes an issue, particularly when you're talking about design elements, right? We want people to be able to make stuff that works well. And so, we don't want to give somebody a monopoly forever on that. And colors, right? There's only so many colors out there, but we don't want to give someone too much rights that would then somehow hinder competition. So the functionality doctrine sort of strives to balance those two competing interests.

Dave Dalton:

I see. John Deere had been using that color combination for a long, long time, right? Did that have something to do with it? If it had been a new tractor and lawnmower company, could they have pulled that off or did John Deere have to demonstrate, "Look, we've been in business since whenever, and we've been using this for this long," or is that irrelevant?

Carrie Kiedrowski:

No, it certainly is relevant and that's a good example. So the color can only be registrable if it also shows secondary meaning in the marketplace, and secondary meaning is only achieved through long-term use in the marketplace. You'd have to show a high volume of advertising, high expenditures and advertising, and that consumers recognize the color as being a symbol for the product or that service. So it's not something if John Deere just started using the color yesterday and tried to register it today, that they would not be able to do so.

Dave Dalton:

Okay. Wouldn't happen. Okay. Let's go back to Anna. Now, you guys were kind enough to send me notes to put an outline together, and this is how we come up with our program and decide what we're going to keep, what we're going to remove, how this podcast takes shape. But I was fascinated by this case, Two Pesos, Inc v. Taco Cabana, Inc. This had to do with the design element of a restaurant, if I've got that correctly. Anna, what happened and is there a takeaway here?

Anna Raimer:

That's exactly right. These were competing fast food Mexican restaurants, and they were in Texas at the time. And Taco Cabana claimed trade dress infringement, basically on the festive appearance and decor of its restaurants. And the jury hearing the case determined that this decor was inherently distinctive. So the question before the Supreme Court was whether trade dress was capable of protection as a trademark, whether under this inherently distinctive standard or whether you had to acquire distinctiveness through secondary meaning as Carrie was just talking about with the color marks. Of course, you also have to show your trade dress as non-functional, as Carrie just mentioned too. So what the Supreme Court held was that trade dress that is inherently distinctive is protectable without a showing a secondary meaning, because it's capable of identifying products and services as coming from a specific source. So that when you went into these Taco Cabana restaurants, you knew that you were in a Taco Cabana because it had this inherently distinctive decoration that you associated with Taco Cabana.

Anna Raimer:

Just to note though, Dave, from what Meredith said earlier, it's not across the board in connection with trade dress. When you have a product design trade dress, that is going to require secondary meaning. The Supreme Court in 2000, it's decision Wal-Mart v. Samara Brothers limited this ruling on inherent distinctiveness, such that it's only to product packaging trade dress, or trade dresses akin to that, which they considered the restaurants to be. So if it's going to be product design trade dress, it's not going to be inherently distinctive. You're always going to have to make that showing of secondary meaning, the types of evidence that Carrie was just discussing in terms of color.

Dave Dalton:

Okay. You can see how this would play out in the marketplace. I mean, there are certain restaurants and other entities, buildings out there that you don't even need to see the sign, you know what that is, right. It's recognizable. And that's where it takes on that kind of meaning and that kind of significance. Is that correct or am I-

Anna Raimer:

That's Exactly right.

Dave Dalton:

Yeah. Okay, good. Okay. Meredith, back to you. Now, we've talked about Romag Fasteners, Inc v. Fossil, Inc on at least two prior programs. A great case, recent case, but definitely warrants another mention. The Supreme Court ruled that a plaintiff in a trademark infringement lawsuit is not required to demonstrate that the defendant willfully infringed on their trademark to claim loss, profit damages. Meredith, like I said, we've talked about this twice, so I'm not trying to bore our audience, but this was a significant case. Why was it such a game changer?

Meredith Wilkes:

Really, it's a big deal, Dave. You're right. The Justice Gorsuch opinion makes it very clear that a plaintiff need not prove willfulness to get to a defendant's profits in a trademark infringement action. And that would also by extension apply to a false advertising case, 15 USC 11, 17, where the damages provision for the Lanham Act is, it doesn't say anything about willfulness in the plain language of section A, which is what we're talking about here for trademark infringement and false advertising. There's nothing in the language of A, that ever required willfulness, yet over time, there was a dead circuit split. 50% of the circuits were requiring willfulness and 50% were not in order to disgorge the defendant's profits.

Meredith Wilkes:

And so, finally the Supreme Court weighed in on it and said it is not a necessary prerequisite. It is still a factor to be considered because disgorgement is something that happens in equity. And so, the conduct at issue is something that a court and equity would certainly be permitted to consider, but it's not an absolute prerequisite. And so if for no other reason gives litigants more certainty in terms of what the law is, because here really, I mean, it would lend itself to a lot of forum shopping, and so we've removed that element from the uncertainty for trademark litigants.

Dave Dalton:

I'm trying to remember. Lower courts were split. How long did this drag on? Had this has been in and out of courts for years. It seems to be like it was meandered around forever, didn't it?

Meredith Wilkes:

It did go on for quite some time because there was some revision to the Lanham Act that modified provisions to the dilution statute that Anna was talking about earlier, but left intact the remedies for infringement and false advertising. So this has been something that's been rather uncertain for over a decade. We've seen a lot of Supreme Court work on the Lanham Act in the last several years or weighing in on trademark cases in the last several years. And so I think people realized that it was just a matter of time before it got to the court, especially when you started to see the 50, 50 circuit split. That's when you really do need someone to come in and break the tie so to speak.

Dave Dalton:

Sure. Sounds like it was high time, that's for certain. All right. Trademark Modernization Act of 2020 incorporated into the last December COVID-19 Relief Bill, which that's how it happened folks, right. That has brought about significant changes to trademark law, and there have been changes to both trademark prosecution and litigation. So let's talk about this. Carrie, first, you. Some of the changes were driven by the high number of pilings from China. Explain that for us and what some of the changes are in terms of trademark prosecution and the registration process.

Carrie Kiedrowski:

Sure thing. And this is such a problem, but help is on the way with the Trademark Modernization Act. So we're really thrilled that this is going to be another way for us to combat some of the issues related to extreme levels of trademark filings from China. As I give you a little stat here, between 2013 and 2017, there was a 1200% increase in filings from China. And this is remarkable. A large number of those were paid for by only three credit cards.

Dave Dalton:

Wait. Say that again. Three credit cards?

Carrie Kiedrowski:

Yes. A large number of the applications filed from individuals from China or companies from China, were paid for by only three credit cards. So what's happening here? In China, the government actually has mandated that state sponsored enterprises and state owned enterprises have to increase their foreign trademark filings by 50%. So there's government mandates that are requiring Chinese companies to file for foreign trademarks. And another reason, is really that's to stifle competition and to try to clutter the U.S. Trademark office. But also, in China, subsidies are paid to individuals and companies to obtain trademark registrations in the U.S. And we're talking thousands of trademark applications. And many of these are fraudulent. Obviously there are some legitimate ones, but the vast majority are likely fraudulent. And then what we've seen are doctored photos showing trademarks on products where the actual trademark doesn't exist in the product, manipulation through various computer programs trying to show use. And all of this is really curtailing legitimate businesses' ability to obtain trademark registrations for their goods and services.

Dave Dalton:

Sure. I shouldn't go down this rabbit hole, but I can't help myself. Who polices this sort of thing? Who regulates? Who watches this? Who calls foul or do you have to litigate this civilly? Who stops this or who should be stopping this?

Carrie Kiedrowski:

Well, right now, we're hoping that Congress has made some dent here. It's really difficult. Sometimes you have to battle this on a one case one-off basis, but lobbying for congressional action, and that's kind of happened in this context. And then there's some procedures that have come into place through the TMA that will be helpful for trademark owners. One of those, and I'll just talk about a couple of related to the prosecution. So in the prosecution of a trademark application, it can take well over a year or to obtain a trademark registration. But part of the delays are related to the length of time that an applicant is allowed to have to respond to a trademark refusal. And in that instance, a trademark refusal could be issued about three to four months after you file. The refusal then gives you right now, six months to respond. So during that time, you have businesses attempting to introduce products to the marketplace, and there's so much delay and so much stalling that happens.

Carrie Kiedrowski:

And so through the TMA, this six month period will be reduced and will be up to the examiner from the United States Patent and Trademark Office. It could be as short as two months up to six months, but there's more leeway now, and that's really going to help move applications along.

Dave Dalton:

Sure. Forms are good. All right, let's go back to Anna for a second. Anna, I've got a note here about the changes to the cancellation actions. What's happening with those?

Anna Raimer:

Sure. Thanks, Dave. As Carrie was just mentioning, there is a very large problem with respect to applications being registered when there actually hasn't been legitimate use. And so, one of the ways to attack that is by having a new procedures that are focused on canceling registrations for marks that haven't been used. And there's going to be two different types of these cancellation proceedings, which are meant to be faster, so more efficient, cheaper. I mean, in order to really focus on canceling either the entire registration or the certain business services that haven't been in use. So the first type is referred to as expungement. And this is for marks that have never been used. And what you will be able to do is file this type of proceeding 3 to 10 years after a mark has registered. You're not going to have that tenure limit for a couple of years, but it will be after 10 years. And then if you still want to cancel based on that it has never been used, then it's actually a new ground for a cancellation proceeding for a traditional cancellation proceeding, not this fast track.

Anna Raimer:

And the second type, Dave, is going to be re-examination. And this is for marks that weren't used prior to the claim of use in commerce. So, that goes to some of the other types of applications Carrie was just talking about that maybe they're doctored specimens, or they claimed use when they actually were not using the mark. Perhaps, it was they were using it in connection with one good, but not the 50 in the application, for example. So you have to... In this proceeding, it will be either that there's either not use based on the application date if you claim use in commerce as of that date, or that there wasn't use at the time that you claimed, filed your statement of use or that your deadline expired to file that date meant of use, and that you didn't have use at that time. And this proceeding is going to be within the first five years of the trademark being registered, you'll be able to do that. So this is going to take effect December 27th. And it's going to apply to all the marks that were registered before or after that date.

Dave Dalton:

In December 27th of this year?

Anna Raimer:

Yes, that'll be a year after the enactment of the Trademark Modernization Act. And so we're still getting some procedures in place, the regulations in place exactly how these proceedings are going to go.

Dave Dalton:

We'll be sure and circle back with you on that later this year. As that December 27th date comes around, we got to talk again and kind of explore some of these issues and hear what clients are asking about and where things are moving on that. So we will make a note and make sure we come back to you on that, Anna. Meredith, staying on this for a second, talk about what else here is significant. I know there were some significant changes to district court litigation. What's most significant here?

Meredith Wilkes:

So Dave, unlike the changes that Anna and Carrie were talking about that go into effect next year, and for sure, you'll be hearing more from them on that and guidance for our clients in that respect. But the changes to district court litigation go into effect now. They are in effect. And the major change was this. The Supreme Court held in eBay versus MercExchange that an injunction doesn't automatically issue upon a finding of infringement. So meaning that just because you prove that someone infringed your intellectual property right, doesn't automatically entitle you to an injunction. That the traditional principles of equity were going to apply and we're not going to have a hard and fast rule. But eBay versus MercExchange was a patent infringement case, not a trademark infringement case. And there aren't really big differences between the rights protected by the patent laws and those protected by the trademark laws and the evil sort of that the different monopolies are designed to remedy or at least prevent.

Meredith Wilkes:

Not withstanding over time, some courts started to import the eBay holding into trademark infringement cases. And so, what the Trademark Modernization Act does is it resets and says, "No. The Supreme Court's holding in eBay in a patent infringement case does not apply in a trademark infringement case." So, there can be a presumption and is a presumption of irreparable harm upon a showing of infringement. It's important to note though, one thing that we have told clients through our publications and otherwise, is that to be sure it restores the presumption, but it is a rebuttable presumption. So you have to keep that in mind, regardless of which side of the V that you're on, when dealing with that sort of situation.

Dave Dalton:

Interesting. And you know what? This has all been interesting. Great, great program today. Happy birthday Lanham Act, 75 years old. We went over some significant cases that remain relevant, will be for the foreseeable future, so this was a great job today panel. Thank you so much. Meredith, before we sign off, I would be remiss and we don't like to be remiss. I'd be remiss if I didn't ask you, what's going on with Women in IP Initiative? Obviously 2020 was an unusual year and maybe the initiative was limited in terms of what it could do, but things are looking up, I think. So, is there anything on the horizon? Events we ought to be hearing about, or the audience might want to know about?

Meredith Wilkes:

Well, funny you should ask Dave. There's still time to register for our June 30th program, which is still going to be virtual. Eventually we'll all get back in the same room and be able to be in the same place together.

Dave Dalton:

Yeah, I was going to say you're not quitting the road like some fed up rockstar or something. You will take events out again or something, right?

Meredith Wilkes:

That's right. We will take the show back on the road to be sure, it's just a matter of time. This is just going to be a fantastic program. It's leader of the brand. And this is an advocacy program. It's going to talk with some industry experts and hear their views on how to be a better advocate, whether that's in the courtroom, or in the boardroom, or with your team. It's all about using your power of persuasion more effectively and learning some tips and best practices from leaders in the space. And so, we're really looking forward to that program. It's going to be fantastic. We will continue to do our offerings in the fall. We'll have a brand update in September and in November, we'll do a patent update. Whether or not those are in person remains to be seen, but you can always email us at womeninip@jonesday.com, and we're happy to share with you all the product offerings, all the recordings, everything that we have available and all of our different programming opportunities. So you can get in contact with us that way.

Dave Dalton:

Womeninip@jonesday.com, that's email address. Also, we'll make sure the contact information and the invitation to the June 30th event is on the introductory page of this podcast so people have the information there too if needed. So it's all good. Great show today. Thank you. Thank you so much Meredith, Anna, Carrie. We'll do this again soon, but thanks so much for being here today.

Meredith Wilkes:

Thanks for having us.

Anna Raimer:

Thank you, Dave.

Meredith Wilkes:

For complete bios and contact information for Meredith, Anna and Carrie, visit jonesday.com. And while you're there, be sure to visit the firm's insights page where you'll find more podcasts, videos, publications, newsletters, and other interesting content. Subscribe to JONES DAY TALKS® at Apple Podcast and wherever you get your podcasts. JONES DAY TALKS® was produced by Tom Kondilas. As always, we thank you for listening. I'm Dave Dalton. We'll talk to you next time.

Speaker 5:

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