U.S. Trademark Office Changes and the Impact: Rules to Implement the TMA, Specimen Requirements, Foreign Applicants

Description

Recently, the USPTO changed the trademark rules of practice to implement the TMA. The new rules give trademark owners new tools to seek cancellation of trademark registrations covering marks not used in commerce, and more clarity for the letters of protest procedures, and at the same time give the USPTO the ability to move applications through the registration process more efficiently.

Several recent changes at the U.S. Trademark Office have impacted trademark attorneys' practice. These changes include amended rules governing trademark specimen requirements. The USPTO tightened its requirements in view of an influx of fraudulent specimens and has given examiners more latitude to make inquiries to clarify whether a specimen is in use in commerce and to refuse specimens that appear to be digitally altered. These changes conform to existing statutory provisions and precedential case law.

In addition, foreign-domiciled trademark applicants, registrants, and parties to trademark proceedings before the USPTO and the TTAB have required representation by a U.S.-licensed attorney for several years, however, the USPTO has again updated requirements to verify the identity of attorneys and help to prevent the unauthorized use of attorney signatures and fraudulent filings. Furthermore, the USPTO instituted mandatory electronic filing in the USPTO and the TTAB. With limited exceptions, all submissions must be made using the USPTO's online Trademark Electronic Applications System and the TTAB's online Electronic System for Trademark Trials and Appeals.

Listen as our authoritative panel of IP attorneys discusses the USPTO's recent rule changes to implement the TMA. The panel will also discuss the heightened standard for cancellation based on fraud. Lastly, the panel will examine the impact of these changes on U.S. trademark practice and offer best practices for operating within the new rules.