The U.S. Trademark Modernization Act: What Foreign Companies Need to Know
One of the primary goals of the TMA, which will be implemented by December 27, 2021, is to ensure the accuracy and reliability of the U.S. Trademark Registry by creating new tools and procedures for challenging applications and registrations with inaccurate claims of use. It has the potential to significantly impact trademark prosecution and registration in the U.S., particularly for foreign applicants/registrants who obtained a U.S. registration without having to establish use prior to registration.
This panel offers a unique opportunity to learn about the TMA from a variety of perspectives (USPTO and inside and outside counsel) and also to provide your comments and feedback to the USPTO on issues relating to its implementation.
We will start with comments from Amy Cotton, Deputy Commissioner for Trademark Examination Policy at the USPTO, who will provide an overview of the TMA. Ms. Espanda, in-house associate counsel at Lincare, and Ms. Pitts, Counsel at Buchanan Ingersoll & Rooney PC, will then provide comments on the potential impact of the TMA on trademark prosecution, maintenance, and enforcement in the U.S. from the perspective of a practitioner, with focus on the potential impact on foreign applicants and registrants. We will then close with questions for the panel and the opportunity for the audience to provide public comments to the USPTO regarding the TMA and issues related to its implementation.
- What are the policy goals of the TMA and how will it impact trademark prosecution and enforcement in the U.S.?
- How will the new ex parte cancellation proceedings (both of which are aimed at removing unused marks from the register) impact foreign applicants/registrants?
- How does the TMA interact with other changes implemented by the USPTO to address concerns of fraud/non-use?
- What are the special considerations for foreign applicants/registrants seeking to register/maintain U.S. marks based upon foreign registrations (where proof of use is not initially required)?
- What other considerations should foreign applicants/registrants keep in mind in order to prepare for the implementation of the TMA?
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