Trademark Modernization Act of 2020: Prosecution Procedure Changes, New Cancellation Procedures, Presumption of Irreparable Harm

Third-Party Submission of Evidence, Ex Parte Proceedings for Reexamination and Expungement, Rebuttable Presumption

An encore presentation with live Q&A.

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


Conducted on Wednesday, April 14, 2021

Recorded event now available

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Course Materials

This CLE course will guide IP professionals on the new Trademark Modernization Act of 2020 (TMA). The panel will discuss the new prosecution and cancellation procedures enacted by the TMA and the clarification of the status of the presumption of irreparable harm in litigation under the Lanham Act. The panel will offer best practices for navigating the new law.

Description

Congress made sweeping changes to trademark law and U.S. Patent and Trademark Office procedure as part of the bipartisan coronavirus relief bill signed into law in late December. Depending on the jurisdiction, the TMA either restores or confirms a rebuttable presumption of irreparable harm for purposes of injunctive relief against violations of the Lanham Act. It also enacts 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 registration, and trademark owners and applicants should review their goods and services to avoid these new proceedings. Trademark owners and practitioners filing new applications to register marks should keep in mind the new law and familiarize themselves with the implementing regulations when those are issued.

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.

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Outline

  1. Irreparable harm in trademark infringement cases
    1. Federal Circuit split
    2. Clarification in the new law
  2. Challenging fraudulent applications and registrations
    1. Expungement procedures
    2. Reexamination procedures
  3. Prosecution procedures
    1. Letter of protest
    2. Flexible response periods
  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
  • New procedures for canceling registrations covering marks not used in commerce
  • Changes to trademark prosecution practice

An encore presentation with live Q&A.

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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