The Trademark Modernization Act and Beyond: Prosecution Procedure Changes, New Weapons for the Invalidation of Registrations, and the Presumption of Irreparable Harm

Description

The panel will offer best practices for navigating these developments, especially the two entirely new ex parte procedures for challenging registrations. The first, ex parte reexamination, permits challenges to use-based registrations issued under Section 1(a) of the Lanham Act, or, in other words, registrations whose owners averred under oath during the application process that their marks were used in commerce. The second, ex parte expungement, allows challenges to marks that have never been used in commerce and primarily targets registrations issued under either Section 44(e) or Section 66(a) of the Act.

The new law creates additional hurdles for the prosecution and maintenance of federal registrations, and mark owners and practitioners filing new applications to register marks should keep the TMA in mind and familiarize themselves with it and its implementing regulations. Likewise, they also should remember the newly confirmed presumption of irreparable harm when pursuing injunctive relief against violations of their rights. Our authoritative panel will assist them in doing so.

Listen as our authoritative panel of IP attorneys examines the new TMA. The panel will discuss the new prosecution and cancellation procedures and the clarification provided on the issue of irreparable harm in trademark infringement cases. The panel will offer best practices for navigating the new law.