News & Analysis as of

Trademark Modernization Act (TMA) Trademark Trial and Appeal Board

McDermott Will & Emery

Rules Are Rules, Especially in Trademark Proceedings

The Commissioner for Trademarks recently issued a precedential decision terminating a reexamination proceeding for the registrant’s failure to respond within a statutory time period, where there was insufficient justification...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

MarkIt to Market® - April 2023: “Reasonable Investigation” Practice Tips for Trademark Expungement and Reexamination Proceedings

As the 1.5 year anniversary of the Trademark Modernization Act’s implementation approaches in June, the United States Patent and Trademark Office now offers an array of helpful guidance on the requirements, format, and even...more

Kilpatrick

5 Key Takeaways | Petitions for Expungement or Reexamination of the Trademark Modernization Act

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Kilpatrick Townsend's Ted Davis recently spoke at the Federal Bar Association's IP Law Fall Conference 2022 on the topic of "Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act."...more

Kilpatrick

5 Key Takeaways - Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act

Kilpatrick on

Kilpatrick Townsend’s Ted Davis recently spoke at the Federal Bar Association’s IP Law Fall Conference 2022 on the topic of “Petitions for Expungement or Reexamination and Other Aspects of the Trademark Modernization Act.”...more

Seyfarth Shaw LLP

The Five Biggest Mistakes the USPTO is Seeing in Expungement and Reexamination Petitions—and How to Avoid Making Them Yourself

Seyfarth Shaw LLP on

The U.S. Patent and Trademark Office (“USPTO”) has received more than 170 petitions for expungement and reexamination since it began accepting these new filings late last year. And although the Office has issued guidance...more

Kilpatrick

5 Key Takeaways | Combating Misrepresentations in Trademark Prosecution and Maintenance

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Kilpatrick Townsend Partner Ted Davis recently spoke at the New York Intellectual Property Association. He discussed "Combatting Misrepresentations in the Trademark Prosecution and Maintenance" during the Hot Topics in...more

Kilpatrick

5 Key Takeaways - Combating Misrepresentations in Trademark Prosecution and Maintenance

Kilpatrick on

Kilpatrick Townsend’s Ted Davis recently spoke at the New York Intellectual Property Association at its “Hot Topics in Trademark and Copyright Law” seminar. Mr. Davis presented on “Combating Misrepresentations in Trademark...more

Ladas & Parry LLP

The Trademark Modernization Act: A Primer For Brand Owners

Ladas & Parry LLP on

On December 18, 2021, the final rule implementing the Trademark Modernization Act of 2020 (TMA) went into effect, resulting in one of the most significant amendments to the rules of practice in trademark cases in decades...more

Kilpatrick

5 Key Takeaways - Combating Misrepresentations in Trademark Prosecution and Maintenance: The Trademark Modernization Act and...

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Kilpatrick Townsend’s Ted Davis and Rita Weeks recently presented on the topic of “Combating Misrepresentations in Trademark Prosecution and Maintenance: The Trademark Modernization Act and Beyond.” The Trademark...more

Dickinson Wright

Trademark Modernization Act—What New and Upcoming Changes Could Mean for Your Trademarks

Dickinson Wright on

The Trademark Modernization Act (“TMA”) was signed into law on December 27, 2020. Among other things, the TMA created new procedures for challenging pending applications and registrations and updated several rules relating to...more

Kilpatrick

[Webinar] Combatting Misrepresentations in Trademark Prosecution and Maintenance: The Trademark Modernization Act and Beyond -...

Kilpatrick on

The Trademark Modernization Act, many aspects of which went into effect December 27, 2021, implemented numerous changes to United States trademark practice, including codification of letters of protest, changes to the...more

Fenwick & West LLP

Expungement and Reexamination and Shorter Trademark Office Action Response Periods, Oh My!

Fenwick & West LLP on

Yes, you read that correctly. Trademark practice at the U.S. Patent and Trademark Office as we know it is about to change (well, at least in part). The USPTO recently published its final rule implementing certain...more

Fenwick & West LLP

Intellectual Property Bulletin - Winter 2022

Fenwick & West LLP on

In This Issue - Artificial Intelligence: Deepfakes in the Entertainment Industry — Advances in “deepfake” media techniques that use deep learning AI—from uncanny impersonation videos of Tom Cruise and other...more

Orrick, Herrington & Sutcliffe LLP

Ten Facts about the USPTO’s New Expungement and Reexamination Proceedings

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek...more

Orrick, Herrington & Sutcliffe LLP

New Proceedings under the Trademark Modernization Act of 2020: Expungement and Reexamination

As 2021 drew to a close, the United States Patent and Trademark Office (USPTO) introduced two new procedures pursuant to the Trademark Modernization Act of 2020 (the “Act”), providing new, streamlined avenues to seek...more

Chambliss, Bahner & Stophel, P.C.

New Tools for Canceling Trademarks

Have you ever come up with the perfect name for branding your goods or services, only to find out that someone else has already federally registered the trademark for similar goods or services? Unfortunately, it is happening...more

Sullivan & Worcester

The Trademark Modernization Act: New Procedures, New Deadlines and New Standards

Sullivan & Worcester on

On December 18, 2021, the U.S. Patent and Trademark Office (USPTO) rules implementing the Trademark Modernization Act of 2020 (TMA) went into effect. The first major overhaul of the Lanham Act since 1998, the TMA introduced...more

Kilpatrick

Changes to Federal Trademark Law and Their Effective Dates Under the Trademark Modernization Act and its Implementing Regulations

Kilpatrick on

I. Introduction - On December 27, 2020, the Trademark Modernization Act of 2020 (“TMA”) became law after it passed Congress and was signed by the President as part of the year-end Consolidated Appropriations Act for 2021....more

Haug Partners LLP

Changes to USPTO Procedures from the Trademark Modernization Act of 2020

Haug Partners LLP on

On December 7, 2020, Congress enacted the Trademark Modernization Act of 2020 (the “TMA”). The United States Patent & Trademark Office (the “USPTO”) recently promulgated rules implementing the TMA, which, in large part, took...more

Jones Day

New Year, New Trademark Proceedings

Jones Day on

This year kicked off with new tools to help brand owners protect and enforce their marks. The use of a trademark in commerce is an important aspect of U.S. trademark law; however, an increasing number of trademark...more

Shutts & Bowen LLP

Implementation of the Trademark Modernization Act (TMA): What Trademark Owners Need to Know

Shutts & Bowen LLP on

Rebuttable Presumption of Irreparable Harm - The Trademark Modernization Act (TMA) was signed into law December 27, 2020. Importantly, the burden shifting provision for trademark owners in litigation seeking preliminary or...more

Mintz - Intellectual Property Viewpoints

The Trademark Modernization Act’s New Cancellation Procedures are Now Effective

Is an unused registered trademark preventing you from clearing or registering your mark? Or was the blocking registration filed for goods or services that were not in use when the registrant declared that they were? As we...more

BakerHostetler

USPTO Implements Trademark Modernization Act

BakerHostetler on

Earlier this month, certain regulations implementing the Trademark Modernization Act (TMA) went into effect. Per the final rule, the new tools are primarily to clear the “deadwood” – that is, unused registered trademarks –...more

Foley & Lardner LLP

A December to Remember: The Trademark Modernization Act Implemented on December 18, 2021

Foley & Lardner LLP on

The Trademark Modernization Act of 2020 (“TMA”) went into effect on December 18, 2021. Applicants and registrants now have new tools at their disposal to clear the federal register of unused trademarks and the USPTO can move...more

Perkins Coie

USPTO Finalizes Rules Implementing the Trademark Modernization Act

Perkins Coie on

When Congress passed the Trademark Modernization Act of 2020 (TMA) on December 18, 2020, giving both the U.S. Patent and Trademark Office (USPTO) and trademark owners additional tools to reduce clutter and improve the...more

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