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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, September 10, 2024

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide trademark counsel on evidentiary issues at the Trademark Trial and Appeal Board (TTAB). The panel will discuss the Examination Guides, particularly as they address generic marks, evidentiary issues related to third-party registrations, and consumer surveys. The panel will discuss the scope and timing of discovery. The panel will also examine recent court treatment and offer best practices for navigating evidentiary issues at the TTAB.

Faculty

Theodore H. Davis
Partner
Kilpatrick Townsend & Stockton LLP

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of trademark, copyright, false advertising, and unfair competition law. He has particular experience in trade dress disputes and with large-scale trademark clearance and registration projects. He has served on the Board of Directors of the International Trademark Association.

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James R. Hastings
Of Counsel
Rothwell Figg Ernst & Manbeck PC

Mr. Hastings has more than 20 years of experience representing corporate and entrepreneurial brand owners in all facets of trademark law and brand protection and enforcement. Previously, Mr. Hastings served as in-house counsel to a well-known national catalog retailer. He is author of the online publication, Trademark Opposition Lawyer—a guide for CEOs and in-house counsel about contested proceedings before the U.S. Trademark Trial and Appeal Board.

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Description

The USPTO Trademark Manual of Examining Procedure includes three Examination Guides that provide insights on the USPTO's approach to various evidentiary issues. Among other topics, that guidance addresses the issue of so-called generic.com marks and how trademark applicants can establish acquired distinctiveness, including through the use of consumer surveys.

Listen as our authoritative panel of IP attorneys examines evidentiary issues associated with the prosecution of applications and with ex parte and inter partes litigation before the TTAB. The panel will discuss the new Examination Guides, particularly as they address claimed generic.com marks, evidentiary issues related to third-party registrations, and consumer surveys. It also will address the scope and timing of discovery and potential issues associated with:

  • the proper role of notices of reliance;
  • cross-examination of witnesses testifying by declaration;
  • the admissibility and significance of Wayback Machine search results; and
  • the introduction of website captures.

Takeaways will include the best practices counsel should employ when submitting or challenging evidence and testimony, as well as lessons learned from recent case law.

Outline

  1. Examination Guides
    1. Generic.com marks
    2. Consumer surveys
    3. Third-party registrations
  2. Discovery
    1. Scope
    2. Timing
  3. Recent decisions
  4. Best practices

Benefits

The panel will review these and other priority issues:

  • What guidance do the Examination Guides provide for generic.com marks?
  • What lessons can trademark counsel draw from recent decisions when assessing evidence?
  • What best practices should counsel employ when submitting or challenging evidence?