INTA Webcast Offers Insight into New U.S. Trademark Act, Changes in USPTO Practice

Published: March 17, 2021

This spring, the U.S. Patent and Trademark Office (USPTO) will be issuing a notice of proposed rulemaking to seek public comments as the agency implements the U.S. Trademark Modernization Act (TMA) of 2020.

The TMA was signed into law in December 2020, with the goal of improving the accuracy and integrity of the Federal Register. The Act directs the USPTO to move forward on implementing some process and procedural changes to U.S. practice following input from the stakeholder community.

To familiarize practitioners worldwide with the TMA, INTA held a highly attended webcast, “The U.S. Trademark Modernization Act of 2020: What Every Trademark Practitioner Needs to Know,” on March 2.

The webcast is now available on demand to members and non-members on INTA TO-GO.

Speakers included Amy Cotton (Acting Deputy Commissioner for Trademark Examination Policy, USPTO, Alexandria, Virginia, USA) and INTA members Matthew Frisbee (Leason Ellis, White Plains, New York, USA), Anne Gilson LaLonde (Gilson on Trademarks, South Burlington, Vermont, USA), and Scott Woldow (Smith, Gambrell & Russell, LLP, Washington, D.C., USA).

The INTA TO-GO webcast explores changes to the letter of protest procedure and goes into detail on the new reexamination and expungement processes. Mr. Woldow summarized the goals of the TMA changes to U.S. law as: “Integrity and accuracy matters.”

The webcast also provides crucial information about the current status of USPTO practice and outlines key areas for dialogue and engagement with the Office. According to Ms. Gilson LaLonde, “The TMA may shorten response times, but the guidance and implementation will occur with the USPTO rulemaking.”

INTA will be closely monitoring the TMA implementation process and will submit comments to the USPTO.

INTA thanks the panelists for simplifying this complicated, new area of law, and for highlighting specific areas where additional engagement with the USPTO will be helpful.

In addition to the webcast, the Association’s regional offices are holding a series of global “Flash Briefings” designed to give non-U.S. trademark owners and practitioners an overview of the TMA and the opportunity to have their questions answered. INTA members Roderick Enns and Julia Archer, of North Carolina-based Enns & Archer, are conducting the virtual Flash Briefings. The first was held on March 12 for INTA members in India and the second on March 16 for European INTA members. Upcoming are an Africa briefing on March 24, as well as two briefings on March 25 for Asia and Latin America.

For those who desire a deeper dive into the mechanics of the TMA and the USPTO’s rulemaking to implement the law, the longer webcast recording is available on the INTA TO-GO platform.

Register here for “The U.S. Trademark Modernization Act of 2020: What Every Trademark Practitioner Needs to Know.”

INTA’s Washington, D.C., Representative Office advocates the Association’s policy positions in Canada and the United States. To learn more about INTA’s activities in the region, please contact INTA Director of Government Relations Jennifer McDowell.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. 

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