Trademark Modernization Act Implementing Rules: Presumption of Irreparable Harm, New Tools to Remove Inaccurate Claims

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

Tuesday, January 4, 2022

1:00pm-2:30pm EST, 10:00am-11:30am PST

Early Registration Discount Deadline, Friday, December 3, 2021

or call 1-800-926-7926

This CLE course will guide IP counsel on the Trademark Modernization Act (TMA) and its implementing regulations. 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 new implementing procedures.


The TMA was signed into law on Dec. 27, 2020, and much of it goes into effect one year after that date. As enacted, however, the TMA requires the USPTO to fill many of the gaps in the revised Lanham Act through administrative rulemaking. The USPTO therefore is expected to announce its final implementing regulations for the TMA in mid-November, at which point trademark owners and professionals will have a clearer understanding of the TMA's effect on trademark practice. In particular, the final implementing regulations will clarify the procedures governing the TMA's new ex parte reexamination and expungement mechanisms for challenging registrations of marks not used in commerce.

Not all aspects of the TMA depend on the implementing regulations, however, for the TMA also 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 the new TMA rules. The panel will discuss the new procedures and protocols under the TMA. The panel also will offer best practices for navigating the new law.



  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


The panel will review these and other key issues:

  • Presumption of irreparable harm in cases presenting violations of the Lanham Act
  • New procedures and protocols for challenging registrations covering marks not used in commerce
  • Changes to trademark prosecution practice


Davis, Theodore
Theodore H. Davis, Jr.

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

Jones Day

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

Attend on January 4

Early Discount (through 12/03/21)

Cannot Attend January 4?

Early Discount (through 12/03/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video