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Trademark Modernization Act Implementation: Lessons Learned in the First Year

New Shorter Time to Respond to Office Actions, Presumption of Irreparable Harm, Tools to Remove Inaccurate Claims

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

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Conducted on Tuesday, January 24, 2023

Recorded event now available

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This CLE course will guide IP counsel on the Trademark Modernization Act (TMA) and lessons learned in its first year of implementation. The panel will discuss the latest procedures and protocols under the TMA and the effect of the codification of the presumption of irreparable harm since the TMA's enactment. The panel will offer best practices for navigating the TMA and its implementing procedures.

Description

The TMA went into effect in December 2021. The USPTO has seen a surge in trademark applications, which has resulted in serious delays in application processing time. Recently, the TMA introduced a new deadline, which went into effect on Dec. 3, 2022, to respond to office actions. The new deadline gives a three-month rather than six-month statutory period to respond to office actions.

The final implementing regulations for the TMA provided a better understanding of the TMA's effect on trademark practice. Among other things, the implementing regulations clarified the procedures governing the TMA's new ex parte reexamination and expungement mechanisms for challenging registrations of marks not used in commerce.

The TMA codified a presumption of irreparable harm upon a violation of the Lanham Act in a manner assisting prevailing plaintiffs under the Lanham Act in securing injunctive relief. And, unlike the TMA's ex parte reexamination and expungement proceedings, the codified presumption of irreparable harm was effective immediately upon the TMA's signature into law.

Listen as our authoritative panel of IP attorneys examines lessons learned in its first year of implementation and the evolution of trademark practice under the TMA. The panel will discuss the latest procedures and protocols under the TMA and the effect of the codification of the presumption of irreparable harm since the TMA's enactment. The panel will offer best practices for navigating the TMA and its implementing procedures.

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Outline

  1. Procedures and protocols for challenging fraudulent applications and registrations
    1. Ex parte expungement procedures
    2. Ex parte reexamination procedures
  2. Rebuttable presumptions of irreparable harm
  3. Expanded letters of protest
  4. Best practices

Benefits

The panel will review these and other key issues:

  • Presumption of irreparable harm in cases presenting violations of the Lanham Act
  • Procedures and protocols for challenging registrations covering marks not used in commerce
  • 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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