Joseph Matal in Managing IP: ‘Landmark US Trademark Act ‘Bolsters Plaintiffs and Fights Fraud’’


Haynes and Boone, LLP Partner Joseph Matal talked with Managing IP about how the Trademark Modernization Act will give plaintiffs a boost in court and cut down on fraudulent marks on the registry, but parts of the law could be a burden to legitimate rights owners.

Below is an excerpt:

Now, the U.S. Patent and Trademark Office (USPTO) will issue regulations for ex-parte expungement and re-examination proceedings. Parties that file a petition to institute one of these will need to conduct a reasonable investigation to determine that the mark has never been used in commerce.

Joseph Matal, partner at Haynes and Boone in Washington, D.C., and former acting director of the USPTO, says one of the key issues the office will need to determine is what counts as a sufficient search to present a prima facie case of evidence.

He adds that trademark owners will want to ensure that proceedings aren’t instituted against their marks on an insubstantial basis. This concern is particularly relevant for brands that can’t be found with a simple Google search.

During the public comment period, these businesses will probably inform the USPTO of where they advertise or how they can be found and ask that the office take their circumstances into account, says Matal.

No Arthrex at TTAB

Matal at Haynes and Boone points out that parties have already issued challenges to the constitutionality of TTAB [Trademark Trial and Appeal Board] judges and says this provision should put those arguments to rest.

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