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
Recording of a 90-minute premium CLE video webinar with Q&A
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.
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
Faculty
Steven D. Lustig
Counsel
Panitch Schwarze Belisario & Nadel
Mr. Lustig focuses his practice on U.S. and international trademark clearance and prosecution, trademark litigation,... | Read More
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.
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Michael S. Palmisciano
Partner
Sullivan & Worcester
Mr. Palmisciano represents global brands, technology companies and media organizations in a range of intellectual... | Read More
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.
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