In December, 2021, the Trademark Modernization Act (“TMA”) and the Copyright Alternative in Small-Claims Enforcement Act (“CASE Act”) went into effect.
The TMA added two new procedures – “expungement” and “reexamination” - for challenging trademark registrations, and also added “nonuse” as a new ground for cancellation actions.
The USPTO recently made this link available to the public, which lists the registrations in which either a petition for expungement or reexamination was submitted. Since the implementation of the new procedures, 60+ registrations have been subject to cancellation utilizing one of the two new mechanisms.
Expungement and reexamination – efficient and cost effective alternatives to cancellation proceedings
Cancellation (new nonuse ground)
Other key takeaways from the TMA include:
For Copyright challenges, the CASE Act establishes a Copyright Claims Board. Parties may now use the Copyright Claims Board as an additional forum to voluntarily seek resolution of copyright claims under $30,000. For smaller claims, the Copyright Claims Board may be a quicker and cheaper method for enforcing copyright registrations.
Shoko Naruo, Tom Polcyn and Brendan Bement are members of Thompson Coburn’s Intellectual Property group.
Although we would like to hear from you, we cannot represent you until we know that doing so will not create a conflict of interest. Also, we cannot treat unsolicited information as confidential. Accordingly, please do not send us any information about any matter that may involve you until you receive a written statement from us that we represent you (an ‘engagement letter’).
By clicking the ACCEPT button, you agree that we may review any information you transmit to us. You recognize that our review of your information, even if you submitted it in a good faith effort to retain us, and, further, even if you consider it confidential, does not preclude us from representing another client directly adverse to you, even in a matter where that information could and will be used against you. Please click the ACCEPT button if you understand and accept the foregoing statement and wish to proceed.