News & Analysis as of

Trademark Registration Expungement

Womble Bond Dickinson

Trademark Insights: What the First Precedential TTAB Expungement Decision Means for You

Womble Bond Dickinson on

As a trademark applicant, encountering a prior registration that obstructs your path to registration is never a pleasant experience (nor for your attorneys who have to inform you about it). The frustration only intensifies...more

Miller Canfield

This is How We Use It: The Importance of Use in Canadian Trademark Law and Keeping Records of Use

Miller Canfield on

In our previous article, Protecting Your Brand: A Primer on Canadian Trademarks, we touched upon the beginning stages of a trademark application and considerations such as, "Should I register my trademark?" and "Is the...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

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

MarkIt to Market® - April 2023

Thank you for reading the April 2023 issue of Sterne Kessler's MarkIt to Market® newsletter. This month, we discuss practice tips for the two new petition processes instituted by the Trademark Modernization Act and highlight...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

Faegre Drinker Biddle & Reath LLP

Expungement and Reexamination: A Mid-Year Check-In

This time last year, we introduced a series of blog posts in which we provided an overview of the new ex parte examination and expungement proceedings introduced by the Trademark Modernization Act (“TMA”) and pondered a...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

Levenfeld Pearlstein, LLC

Modern Problems: Recent and Upcoming Changes to US Trademark Practices Could Impact Your Business

The Trademark Modernization Act of 2020 (TMA) was signed into law on December 27, 2020. The TMA amended the federal trademark law (known as the Lanham Act) to provide new tools to address abuses of the US trademark...more

Ward and Smith, P.A.

The Trademark Modernization Act

Ward and Smith, P.A. on

Background on Trademark Rights - While it is not required to establish trademark rights in the U.S., there are many benefits to applying to register trademarks with the U.S. Patent and Trademark Office ("USPTO").  For...more

Kilpatrick

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

Kilpatrick on

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

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

Verrill

Trademark Registrants Beware: Important U.S. Trademark Developments Can Result in Cancelled Registrations

Verrill on

As of December 27, 2021, new “expungement” and “reexamination” proceedings are available for third parties to request the cancellation of an active U.S. trademark registration that is not being used in connection with some or...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

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

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

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

MarkIt to Market® - December 2021: Thoroughly Modern! The Trademark Modernization Act Offers New Tools for Trademark Owners

Trademark owners and practitioners have some extra reasons to celebrate this year, as the majority of the Trademark Modernization Act went into effect on December 18, 2021. Among other benefits for trademark infringement...more

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

MarkIt to Market® - December 2021

The December 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses new enforcement tools courtesy of the Trademark Modernization Act; Pfizer's acquisition of Arena Pharmaceuticals; the latest developments in...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

Morrison & Foerster LLP

Trademark Owners: What You Should Know About the USPTO’s Final Rules Implementing the TMA

Morrison & Foerster LLP on

The Trademark Modernization Act (TMA) was signed into law on December 27, 2020, and the United States Patent & Trademark Office (USPTO) recently announced its final rules for implementing the TMA, the majority of which will...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

McDermott Will & Emery

PTO Publishes Regulations to Implement Trademark Modernization Act

McDermott Will & Emery on

The US Patent and Trademark Office (PTO) recently published its final rules implementing provisions of the Trademark Modernization Act of 2020 (TMA). Most changes are effective as of December 18, 2021, but certain changes...more

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