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

An encore presentation

A 90-minute premium CLE video webinar

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Wednesday, December 28, 2022

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

or call 1-800-926-7926

This CLE course will guide IP counsel on recent 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 changed the trademark rules of practice to implement the TMA. The new rules 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.

Several recent changes at the U.S. Trademark Office have impacted trademark attorneys' practice. These changes include amended rules governing trademark specimen requirements. The USPTO tightened its requirements in view of an influx of fraudulent specimens and has given examiners more latitude to make inquiries to clarify whether a specimen is in use in commerce and to refuse specimens that appear to be digitally altered. These changes conform to existing statutory provisions and precedential case law.

In addition, foreign-domiciled trademark applicants, registrants, and parties to trademark proceedings before the USPTO and the TTAB have required representation by a U.S.-licensed attorney for several years, however, the USPTO has again updated requirements to verify the identity of attorneys and help to prevent the unauthorized use of attorney signatures and fraudulent filings. 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 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 on U.S. trademark practice and offer best practices for operating within the new rules.

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Outline

  1. Changes to implement the TMA
  2. Other 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. Expanded non-use cancellation mechanisms
  5. Best practices for trademark practice under the new rules

Benefits

The panel will review these and other key issues:

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

This is an encore presentation.

Faculty

Wilcox, Amanda
Amanda H. Wilcox

Partner
Taft Stettinius & Hollister

Ms. Wilcox focuses her practice on all aspects of intellectual property, helping to protect the trademarks and other IP...  |  Read More

Wolfgram, Laila
Laila S. Wolfgram

Of Counsel
Polsinelli

Ms. Wolfgram uses her extensive experience to develop global brand protection strategies for her clients. She...  |  Read More

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