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Trademark Modernization Act and Beyond: Impact Moving Forward

Leveraging Prosecution Procedure Changes, New Weapons for Invalidating Registrations, Presumption of Irreparable Harm

Recording of a 90-minute premium CLE video webinar with Q&A

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Conducted on Thursday, November 30, 2023

Recorded event now available

or call 1-800-926-7926

This CLE course will guide IP professionals on the new Trademark Modernization Act of 2020 (TMA) and related judicial and regulatory developments aimed at protecting the integrity of the USPTO's trademark registers. The panel will discuss:

  • the TMA's ex parte procedures for challenging registrations;
  • codification of the letter of protest process;
  • the TMA's clarification of the status of the presumption of irreparable harm in litigation under the Lanham Act;
  • the USPTO's administrative sanctions program; and
  • the Trademark Trial and Appeal Board's newfound receptiveness to claims of fraud on the USPTO.

Description

The panel will offer best practices for navigating these developments, especially the two 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 TMA 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 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 TMA.

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Outline

  1. Brief background and history of the Trademark Modernization Act
    1. The surge in dubious claims of use in commerce
    2. The congressional and regulatory response
  2. The TMA's procedures for challenging registrations
    1. Ex parte expungement
    2. Ex parte reexamination
    3. The cancellation cause of action for nonuse
  3. Changes made by the TMA to prosecution practice
    1. Letter of protest
    2. Shortened response periods
  4. The presumption of irreparable harm
  5. The USPTO's new administrative sanctions program
  6. Fraud on the USPTO

Benefits

The panel will review these and other key issues:

  • The presumption of irreparable harm in cases presenting violations of the Lanham Act
  • Procedures for canceling registrations covering marks not used in commerce
  • Additional weapons against bad faith filings
  • Changes to trademark prosecution practice

Faculty

Davis, Theodore
Theodore H. Davis, Jr.
Partner
Kilpatrick Townsend & Stockton

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of...  |  Read More

Raimer, Anna
Anna E. Raimer
Partner
Jones Day

Ms. Raimer works with clients to design and implement worldwide trademark protection programs, strengthen their IP...  |  Read More

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