U.S. Trademark Office Changes and Their Impact: Specimen Requirements, Foreign Applicants, Filing Procedure

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


Conducted on Thursday, May 7, 2020

Recorded event now available

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Program Materials

This CLE webinar will guide IP counsel on recent changes by the U.S. Trademark Office, including the heightened standard for cancellation based on fraud and rule changes. 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

There have been several changes at the U.S. Trademark Office over the past year that impact the practice of trademark attorneys. Many of the changes are to combat fraudulent filings.

Included among the changes is the revision to the rules regarding 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 comport with the higher standard for evidence of use in TTAB proceedings.

The USPTO changed the rules for foreign applicants, who are now required to have a U.S.-licensed attorney if they wish to file a trademark application. The USPTO also instituted mandatory electronic filing and use of the Trademark Electronic Applications System (TEAS). This change will affect specimens and the petition process. Further, with the recent introduction of the Trademark Modernization Act more changes are expected.

Listen as our authoritative panel of IP attorneys discusses the recent changes by the U.S. Trademark Office. The panel will discuss the heightened standard for cancellation based on fraud and the recent rule changes, including those addressing specimen requirements, U.S. attorneys for foreign applicants, and electronic filing. The panel will examine the impact of these changes on trademark applicants, registrants, and U.S. trademark practice. The panel will also offer best practices for operating within the new rules.

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Outline

  1. Recent changes by the U.S. Trademark Office
    1. Specimen requirements
    2. Foreign applicants
    3. Electronic filing
    4. Anticipated changes
  2. What the changes mean for trademark practice
  3. Cancellation based on fraud - heightened standard
  4. 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 do these rule revisions change trademark practice?
  • What steps should trademark counsel take to ensure compliance with the new rules?

Faculty

Bannigan, Megan
Megan K. Bannigan

Counsel
Debevoise & Plimpton

Ms. Bannigan specializes in trademark, copyright, false advertising, rights of publicity, licensing and other...  |  Read More

Wilkes, Meredith
Meredith M. Wilkes

Partner
Jones Day

Ms. Wilkes is a trial lawyer whose practice is focused on brand protection and enforcement. She has led...  |  Read More

Winterfeldt, Brian
Brian J. Winterfeldt

Principal
Winterfeldt IP Group

Mr. Winterfeldt advises clients on the creation of global trademark and branding strategies. He also develops programs...  |  Read More

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