Leveraging Expungement and Reexamination Proceedings Under the TMA to Protect Trademark Portfolios and Brands
Benefits and Risks, Reasonable Investigation, Instituting Proceedings, Meritless Filings, and Responding to Petitions

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Thursday, December 5, 2024
- 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 IP counsel on the expungement proceedings under the Trademark Modernization Act of 2020 (TMA). The panel will provide a deeper dive into the proceedings, discussing the benefits and risks and how these proceedings are instituted. The panel will address potential abuse by bad actors and the vetting process to weed out meritless filings. The panel will examine when these petitions are filed, what must be included in a petition for expungement, and how to respond to a petition for expungement.
Faculty

Mr. Palmisciano represents global brands, technology companies and media organizations in a range of intellectual property and commercial matters. He has extensive experience with transactional IP matters, including technology and software licensing, SaaS agreements, content licensing, trademark coexistence, merchandising and brand licensing, professional services agreements, and website and mobile application terms of use. Mr. Palmisciano manages the IP aspects of corporate, M&A and financing transactions for public and private companies. He also regularly serves as outside general counsel and commercial counsel to emerging businesses. Mr. Palmisciano’s practice also focuses on the clearance, prosecution and enforcement of trademarks and copyrights. He counsels clients on all aspects of domestic and international trademark selection and searching, portfolio management, brand strategy, copyright protection, fair use and domain name acquisitions. Mr. Palmisciano represents clients across industries in pre-litigation and administrative enforcement matters including cease and desist letters, oppositions, cancellations, DMCA takedowns and domain name disputes.

Mr. Lustig focuses his practice on U.S. and international trademark clearance and prosecution, trademark litigation, internet domain name registration and dispute resolution, e-business issues relating to intellectual property, customs enforcement, anti-counterfeiting measures, trade dress and unfair competition enforcement. His practice also focuses on intellectual property transactions and related due diligence. Mr. Lustig advises clients on all aspects of copyright protection and unfair competition, as it relates to trademark law and brand protection. With over 20 years of experience, he has been named among the leading trademark attorneys in the 2021 edition of the World Trademark Review’s WTR 1000. Mr. Lustig is an active member of the INTA, and he currently serves on the U.S. Subcommittee of the Legislation and Regulation Committee.
Description
The TMA provided ways to seek cancellation of trademarks that are not or have not been in actual use. Petitioners may request an expungement proceeding between three and 10 years after the mark is registered.
Petitioners must meet the requirements of the expungement proceeding, demonstrating the mark being challenged has never been used in commerce and that they made a bona fide attempt to determine it has not been used. Petitioners must conduct a reasonable investigation, but what is reasonable has not been defined. Proving a negative could prove to be very difficult.
Listen as our panel provides a deeper dive into expungement proceedings. This webinar will discuss the benefits and risks of expungement proceedings, how these proceedings are instituted, potential abuse by bad actors, and the vetting process to weed out meritless filings. The panel will examine when these petitions are filed, what must be included in a petition for expungement, and how to respond to a petition for expungement.
Outline
- Expungement and reexamination proceedings
- Benefits and risks
- Instituting proceedings
- Vetting process and meritless filings
- Reasonable investigation
- Responding to petitions for expungement or reexamination
- Best practices for leveraging expungement and reexamination proceedings
Benefits
The panel will review these and other key issues:
- Procedure and protocols for challenging registrations covering marks not used in commerce
- What constitutes a "reasonable investigation"
- Best practices to navigate the expungement proceeding to challenge marks that have never been used in commerce
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