The New Trademark Modernization Act—New Procedures, Big Impact

The Trademark Modernization Act is the biggest statutory change to the Lanham Act in decades. It creates new procedures for canceling certain mark registrations on the basis that the marks were not in use at certain times. The act also made various changes to trademark practice at the USPTO that are far-reaching and affect all aspects of trademark practice before the USPTO. New final regulations implementing the act were issued in November 2020. This seminar reviews the act and the regulations.

Join us for this essential program taught by John Farmer, an intellectual property attorney with years of experience in trademark and copyright law and protecting that IP in evolving technology environments.

Topics to be covered include:

• Review of the statute and recently issued final regulations
• New expedited procedures for canceling certain trademark registrations based upon the mark nonuse at critical times
• Comparison of the new processes to a cancellation petition—relative speed and effectiveness
• New rules for letters of protest, which oppose pending applications of others
• Shortening of response times for office actions
• New presumption that aids in getting an injunction
• New rules on how long attorney representation lasts
• Coming new USPTO security infrastructure around applications and registrations
• New duty to monitor registrations
• Strategy points and best practices regarding the above

ABOUT THE SPEAKER

John B. Farmer, Leading-Edge Law Group, PLC / Richmond
John B. Farmer is a member of the Leading-Edge Law Group, PLC, an intellectual property (“IP”) boutique law firm in Richmond, Virginia. He served as chairman of the Trademark Public Advisory Committee of the United States Patent and Trademark Office. He writes a monthly IP and technology law column for the Richmond Times-Dispatch. He is listed in the top rank of Virginia IP attorneys by Chambers USA and listed for IP in Best Lawyers in America.

Mr. Farmer is a past chair of the IP Section of the Virginia State Bar. He is a past president of the Greater Richmond Intellectual Property Law Association. He graduated from the University of Virginia and its law school. After graduation from law school, he clerked for the Honorable Donald S. Russell, Judge of the U.S. Fourth Circuit Court of Appeals, and for the Honorable James C. Cacheris, Judge of the U.S. District Court for the Eastern District of Virginia, Richmond Division.