Kilpatrick Townsend’s Ted Davis recently spoke at the New York Intellectual Property Association at its “Hot Topics in Trademark and Copyright Law” seminar. Mr. Davis presented on “Combating Misrepresentations in Trademark Prosecution and Maintenance.”
Key takeaways from his presentation include the following:
- Over a half a year of experience has yielded valuable insights into the administration of the Trademark Modernization Act (TMA) by the United States Patent and Trademark Office (USO), including:
- How to establish the prima facie case of nonuse necessary to initiate either or both of the TMA’s ex parte mechanisms for challenging federal trademark registrations; and
- How federal registrants can rebut prima facie cases of nonuse;
- The USPTO is increasingly cracking down on misrepresentations in the registration process through an apparent expansion of its administrative sanctions program;
- Likewise, the Trademark Trial and Appeal Board (TTAB) has recently become more receptive to allegations of the fraudulent procurement and maintenance of registrations;
- The TMA has had its intended effect of restoring the presumption of irreparable harm in cases in which a violation of the Lanham Act has been shown in litigation; and
- It also has successfully protected the judges of the TTAB against allegations that they have been unlawfully installed under the Constitution’s Appointments Clause
