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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, January 24, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide IP counsel on the Trademark Modernization Act (TMA) and lessons learned in its first year of implementation. The panel will discuss the latest procedures and protocols under the TMA and the effect of the codification of the presumption of irreparable harm since the TMA's enactment. The panel will offer best practices for navigating the TMA and its implementing procedures.

Faculty

Anna E. Raimer
Partner
Jones Day

Ms. Raimer works with clients to design and implement worldwide trademark protection programs, strengthen their IP portfolios, and resolve domestic and international trademark disputes. She has significant experience managing international brands for clients. Ms. Raimer counsels clients regarding the development and protection of intellectual property assets in industries ranging from personal care products to automotive goods to sports and entertainment services to energy. She oversees all aspects of trademark clearance, prosecution, and maintenance, and she advises on trademark and copyright issues in license agreements and commercial transactions. Ms. Raimer is an adjunct professor at the University of Houston Law Center, teaching internet law. She is vice chair of the USPTO Operations Relating to Trademarks Committee of the ABA Section of Intellectual Property Law and a member of the International Trademark Association's Publications Committee.

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Theodore H. Davis
Partner
Kilpatrick Townsend & Stockton LLP

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He has particular experience in trade dress disputes and with large-scale trademark clearance and registration projects. He has served on the Board of Directors of the International Trademark Association.

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Description

The TMA went into effect in December 2021. The USPTO has seen a surge in trademark applications, which has resulted in serious delays in application processing time. Recently, the TMA introduced a new deadline, which went into effect on Dec. 3, 2022, to respond to office actions. The new deadline gives a three-month rather than six-month statutory period to respond to office actions.

The final implementing regulations for the TMA provided a better understanding of the TMA's effect on trademark practice. Among other things, the implementing regulations clarified the procedures governing the TMA's new ex parte reexamination and expungement mechanisms for challenging registrations of marks not used in commerce.

The TMA codified a presumption of irreparable harm upon a violation of the Lanham Act in a manner assisting prevailing plaintiffs under the Lanham Act in securing injunctive relief. And, unlike the TMA's ex parte reexamination and expungement proceedings, the codified presumption of irreparable harm was effective immediately upon the TMA's signature into law.

Listen as our authoritative panel of IP attorneys examines lessons learned in its first year of implementation and the evolution of trademark practice under the TMA. The panel will discuss the latest procedures and protocols under the TMA and the effect of the codification of the presumption of irreparable harm since the TMA's enactment. The panel will offer best practices for navigating the TMA and its implementing procedures.

Outline

  1. Procedures and protocols for challenging fraudulent applications and registrations
    1. Ex parte expungement procedures
    2. Ex parte reexamination procedures
  2. Rebuttable presumptions of irreparable harm
  3. Expanded letters of protest
  4. Best practices

Benefits

The panel will review these and other key issues:

  • Presumption of irreparable harm in cases presenting violations of the Lanham Act
  • Procedures and protocols for challenging registrations covering marks not used in commerce
  • Changes to trademark prosecution practice