U.S. Trademark Office Changes and the Impact: Rules to Implement the TMA, Specimen Requirements, Foreign Applicants

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


Conducted on Tuesday, August 3, 2021

Recorded event now available

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Course Materials

This CLE course will guide IP counsel on recent rule changes and proposed rule changes by the U.S. Trademark Office, including those implementing the Trademark Modernization Act (TMA). The panel will examine the impact of these changes on trademark applicants, registrants, and U.S. trademark practice, as well as offer best practices for operating within the new rules.

Description

Recently, the USPTO issued a notice of proposed rulemaking setting forth proposed changes to the trademark rules of practice to implement the TMA. When implemented, the proposed new rules, changes to existing procedures, and other rules changes will give trademark owners new tools to seek cancellation of trademark registrations covering marks not used in commerce, and more clarity for the letters of protest procedures, and at the same time, give the USPTO the ability to move applications through the registration process more efficiently. Comments to the proposed rule changes were due no later than July 19, 2021.

There have been several changes at the U.S. Trademark Office over the past year that impact trademark attorneys' practice. These changes include amended rules governing trademark specimen requirements. The USPTO tightened its requirements and has given examiners more latitude to make inquiries to clarify whether a specimen is in use in commerce. These changes conform to existing statutory requirements and precedential case law.

In addition, foreign-domiciled trademark applicants, registrants, and parties to trademark proceedings before the USPTO and the TTAB must now be represented by a U.S.-licensed attorney. Furthermore, the USPTO instituted mandatory electronic filing in the USPTO and the TTAB. With limited exceptions, all submissions must be made using the USPTO's online Trademark Electronic Applications System and the TTAB's online Electronic System for Trademark Trials and Appeals.

Listen as our authoritative panel of IP attorneys discusses the USPTO's recent rule changes and proposed changes to implement the TMA. The panel will also discuss the heightened standard for cancellation based on fraud. Lastly, the panel will examine the impact of these changes and proposed changes on U.S. trademark practice and offer best practices for operating within the new rules.

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Outline

  1. Proposed changes to implement the TMA
  2. Recent changes by the U.S. Trademark Office
    1. Specimen requirements
    2. Foreign applicants
    3. Electronic filing
  3. What the changes mean for trademark practice
  4. Cancellation based on fraud: heightened standard
  5. Best practices for trademark practice under the new rules

Benefits

The panel will review these and other key issues:

  • What recent changes did the U.S. Trademark Office make to the specimen requirements?
  • How are these rule revisions changing trademark practice?
  • What steps should trademark counsel take to ensure compliance with the new rules?

Faculty

Kagan, Jared
Jared I. Kagan

Attorney
Debevoise & Plimpton

Mr. Kagan practices in the firm’s Intellectual Property and Media Group. His practice includes litigation and...  |  Read More

Tannen, Ilene
Ilene B. Tannen

Of Counsel
Jones Day

Ms. Tannen specializes in trademark and copyright law and practices in the firm’s global Trademarks, Unfair...  |  Read More

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