Leveraging New Expungement and Reexamination Proceedings Under the TMA to Protect Trademark Portfolios and Brands

Benefits and Risks, Reasonable Investigation, Instituting Proceedings, Meritless Filings, and Responding to Petitions

A live 90-minute premium CLE video webinar with interactive Q&A

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Tuesday, October 18, 2022

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

or call 1-800-926-7926

This CLE webinar will guide IP counsel on the new expungement proceedings. The panel will provide a deeper dive into the proceedings, discussing the benefits and risks and how these proceedings are instituted. The panel will address potential abuse by bad actors and the vetting process to weed out meritless filings. The panel will examine when these petitions are filed, what must be included in a petition for expungement, and how to respond to a petition for expungement.

Description

Earlier this year, the U.S. Patent and Trademark Office (USPTO) introduced two new procedures under the Trademark Modernization Act of 2020 (TMA) that provide new ways to seek cancellation of trademarks that are not or have not been in actual use. Petitioners may request an expungement proceeding between three and 10 years after the mark is registered. It is important to note that, until Dec. 27, 2023, petitioners can challenge any registration over three years old. As a result, many portfolios could be vulnerable to these challenges to their older trademarks.

Petitioners must meet the requirements of the new proceeding, demonstrating the mark being challenged has never been used in commerce and that they made a bona fide attempt to determine it has not been used. Petitioners must conduct a reasonable investigation, but what is reasonable has not been defined. Proving a negative could prove to be very difficult.

Listen as our panel provides a deeper dive into expungement proceedings. This webinar will discuss the benefits and risks of expungement proceedings, how these proceedings are instituted, potential abuse by bad actors, and the vetting process to weed out meritless filings. The panel will examine when these petitions are filed, what must be included in a petition for expungement, and how to respond to a petition for expungement.

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Outline

  1. Expungement proceedings
  2. Benefits and risks
  3. Instituting proceedings
  4. Vetting process and meritless filings
  5. Reasonable investigation
  6. Responding to petitions for expungement
  7. Best practices for navigating expungement proceedings

Benefits

The panel will review these and other key issues:

  • New procedure and protocols for challenging registrations covering marks not used in commerce
  • What constitutes a "reasonable investigation"
  • Best practices to navigate the expungement proceeding to challenge marks that have never been used in commerce

Faculty

Lustig, Steven
Steven D. Lustig

Counsel
Panitch Schwarze Belisario & Nadel

Mr. Lustig focuses his practice on U.S. and international trademark clearance and prosecution, trademark litigation,...  |  Read More

Palmisciano, Michael
Michael S. Palmisciano

Partner
Sullivan & Worcester

Mr. Palmisciano represents global brands, technology companies and media organizations in a range of intellectual...  |  Read More

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