USPTO Trademark Practices to Take Effect on Dec. 3, 2022: Everything that brand owners and trademark practitioners should know now
Nancy Rubner Frandsen
Baker & Hostetler LLP
For more than 30 years, Nancy 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).
Ice Miller LLP
Lesley Grossberg is an intellectual property practitioner who works with clients to maximize the value of their intellectual property, with a focus on brand strategy.
Live Video-Broadcast:December 14, 2022
$95.001 hour CLE
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The Trademark Modernization Act is the biggest statutory change to the Lanham Act in decades. Individuals, businesses and the United States Patent and Trademark Office (USPTO) now have new tools to clear away unused registered trademarks from the federal trademark register and the USPTO has the ability to move applications through the registration process more efficiently. Signed into law on December 27, 2020, several of the changes took effect in December 2021, while other changes are being implemented this December. Everything that brand owners and trademark practitioners should know will be discussed in this program.
Key topics to be discussed:
Overview of the Statute and Recently Issued Final Regulations
Ex Parte Expungement
Ex Parte Reexamination
Expanded Letters of Protest
Discretionary Shortened Office Action Response Times
Restoration of Presumption of Irreparable Harm
Court Orders concerning Registrations
Report on Decluttering Initiatives
Key Takeaways and Best Practices
Date / Time: December 14, 2022
11:00 am – 12:00 pm Eastern
10:00 am – 11:00 am Central
9:00 am – 10:00 am Mountain
8:00 am – 9:00 am Pacific
Nancy Rubner Frandsen | Baker & Hostetler LLP
For more than 30 years, Nancy 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). Nancy’s 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. This has led Nancy to be ranked since 2006 by Chambers USA as a “Leading Lawyer” in Intellectual Property Law with a “highly respected trademark and copyright practice” (Chambers USA 2019), where she has been described as “‘tough, experienced leader” (Chambers USA 2015)
Nancy served three years as the National Team Leader of BakerHostetler’s Trademark team and is also an adjunct professor at Villanova University Charles Widger School of Law and Temple University Beasley School of Law, where she teaches trademark practice. She is the co-author of What the General Practitioner Should Know About Trademarks and Copyrights (6th ed.), published by ALI-ABA. Nancy is the course planner of the Pennsylvania Bar Institute’s annual IP Institute, a two-day seminar on the hottest topics in IP law, which she has planned and co-chaired since its inception in 2007. Nancy is a Philadelphia Chapter Founder and Leader of ChIPs, a national organization advancing women in tech, law and policy.
Lesley Grossberg | Ice Miller LLP
Lesley Grossberg is an intellectual property practitioner who works with clients to maximize the value of their intellectual property, with a focus on brand strategy. Lesley represents clients in all aspects of intellectual property litigation, including patent, copyright, trademark, trade secret and unfair competition litigation, and has extensive experience in trademark clearance, prosecution and global portfolio management.
She represents clients in federal district and appellate court litigation, as well as proceedings before the Trademark Trial and Appeal Board (TTAB) and investigations before the International Trade Commission. She routinely handles domain name disputes under the Uniform Domain Name Dispute Resolution Policy and is familiar with intellectual property enforcement tools across various e-commerce services.
I. Overview of the Statute and Recently Issued Final Regulations | 11:00am – 11:05am
II. Ex Parte Expungement | 11:05am – 11:15am
III. Ex Parte Reexamination | 11:15am – 11:25am
IV. Expanded Letters of Protest | 11:25am – 11:30am
V. Discretionary Shortened Office Action Response Times | 11:30am – 11:35am
VI. Restoration of Presumption of Irreparable Harm | 11:35am – 11:40am
VII. Court Orders concerning Registrations | 11:40am – 11:45am
VIII. Attorney Recognition | 11:45am – 11:50am
IX. Report on Decluttering Initiatives | 11:50am – 11:55am
X. Key Takeaways and Best Practices | 11:55am – 12:00pm