Bad Faith in Trademark Registrations: Navigating Recent Changes in the U.S., EU, and China
Mitigating the Impact of Bad Faith Registrations on Good Faith Applications

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, July 12, 2022
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE webinar will guide trademark counsel on recent global efforts to combat bad faith filings. The panel will focus on the recent U.S., China, and EU changes. The panel will offer best practices for dealing with bad faith registrations when they impact good faith applications. They will also address audits.
Faculty

For more than 35 years, Ms. Frandsen has guided clients not only through the core areas of trademark and copyright strategic counseling and portfolio management but also through the more complex areas of the practice, including enforcement before the federal courts and the Trademark Trial and Appeal Board (TTAB). Her in-depth knowledge of her clients’ businesses, from individual entrepreneurs to major corporations, enables her to support and advance their unique objectives and goals and has made her their go-to trademark lawyer.

Ms. Grossberg focuses her practice on all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, as well as trademark prosecution and enforcement. Her experience extends to the e-commerce, financial services, social media, software, consulting, telecommunications and food services industries. Ms. Grossberg represents clients in federal district and appellate court litigation, as well as in inter partes proceedings before the Trademark Trial and Appeal Board (TTAB). She also represents clients in commercial litigation matters, including breach of contract, fraud and other general business cases, before state and federal courts and administrative agencies.

Mr. Traub heads the firm's trademark and brand protection team, with extensive experience in domestic and international filing, prosecution and portfolio management. He acts on behalf of clients before the EU Intellectual Property Office, the International Bureau of WIPO, and the national offices in the UK, Ireland and Germany.

Ms. Emerson helps clients establish, protect, maintain, and enforce intellectual property rights. She develops and executes strategies for protecting brands around the world. Her practice includes all aspects of trademark searching and clearance, as well as the prosecution of trademark and copyright applications through to registration. She counsels clients regarding foreign trademark matters, including cross-border opposition and cancellation proceedings. In particular, she has significant experience enforcing intellectual property rights in China. She also advises clients regarding licensing and other commercial agreements.
Description
To combat bad faith filings, the U.S. Trademark Office has put in place new rules. The USPTO is conducting random audits of registration maintenance filings. These audits are part of the effort to determine whether a mark is in use with all of the goods and services identified in its Declarations of Use.
There is an increasing awareness of the need to establish and protect brands in China. As a result, there is a higher demand for trademark registrations. However, some malicious registrants seek to register the trademarks of others. Because many foreign brands are not known to the Chinese market, they are often the easiest targets. In recent years, China revised the criteria to determine a malicious registration and set a new standard for "improper means."
Within EU trademark law, a trademark owner must demonstrate actual use of the trademark within a time frame. If use cannot be proved, the mark is at risk of invalidation. Also, if the mark is re-registered in bad faith, it may be invalidated. A recent decision by the European General Court upheld a ruling canceling the MONOPOLY trademark registration after finding the re-filed mark may have been in bad faith. The decision opens the door for attacks on re-filings on the grounds of bad faith.
Listen as our authoritative panel of IP attorneys examines the recent global efforts to combat bad faith filings. The panel will focus on the recent U.S., China, and EU changes. The panel will offer best practices for dealing with bad faith registrations when they impact good faith applications. The panel will also address audits.
Outline
- Bad faith in trademark registration trends
- Combatting bad faith registrations in the U.S.
- Combatting bad faith registrations in the EU
- Combatting bad faith registrations in China
- Best practices
Benefits
The panel will provide practitioners with a thorough understanding of:
- The applicable standards governing bad faith registrations in the U.S., EU, and China
- How to leverage the current state of the case law
- Strategies and procedures to avoid bad faith registrations
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