Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 25 MAY 2022

Trademark Modernization Act: Considerations For Expungement And Reexamination Proceedings

Panitch Schwarze Belisario & Nadel
Explore more from Panitch Schwarze Belisario & Nadel

The Trademark Modernization Act became effective on Dec. 18, 2021. By now, practitioners have been bombarded by vast numbers of articles that review the changes made by this law.

United StatesIntellectual Property
Steven D. Lustig
Steven D. Lustig

The Trademark Modernization Act became effective on Dec. 18, 2021. By now, practitioners have been bombarded by vast numbers of articles that review the changes made by this law. The purpose of this article, however, is to discuss practical considerations when pursuing the new ex parte expungement and reexamination proceedings.

The legal requirements for successful expungement and reexamination proceedings are a high bar. So, care must be taken when pursuing these actions.

Brief Discussion of Changes to Existing Law

The Trademark Modernization Act (TMA) made several changes to existing U.S. trademark law. The USPTO has outlined these changes here:  https://www.uspto.gov/trademarks/laws/2020-modernization-act. The following is a brief list of the changes that are receiving comparatively less attention:

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

View source

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein