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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, August 16, 2022

  • 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

This course is $0 with these passes:

CLE
ALL

This CLE course will guide trademark counsel on the identification of goods and services and the considerations applicants should keep in mind when crafting identifications. The panel will discuss obstacles to registration and the implications of the USPTO's proof of use audits on crafting identifications. The panel will offer best practices for crafting the identification of goods and services in trademark applications.

Faculty

Draeke H. Weseman
Of Counsel
Greenberg Traurig LLP

Mr. Weseman counsels clients on the strategic development, maintenance, and enforcement of trademark rights and related matters. A go-to attorney for company executives and in-house legal counsel, he advises on creative brand protection, brand acquisitions, trademark clearance, enforcement, litigation, licensing, and global trademark prosecution. Mr. Weseman has handled thousands of trademark matters worldwide for Fortune 500 and other publicly traded and privately held companies, global media franchises, Silicon Valley venture-backed startups, international luxury fashion houses, celebrities, and the U.S. National Governing Body for an Olympic sport. Clients in a wide range of industries trust Mr. Weseman to identify, prosecute, maintain, and protect their most valuable brand assets. His practice spans consumer goods, food and beverage products, restaurant and hospitality services, entertainment, financial services, medical devices, pharmaceuticals, and blockchain and digital assets. Mr. Weseman is a skilled writer and regularly speaks to national audiences. His contributions to U.S. trademark law include establishing precedent before the TTAB of the USPTO.

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Rory P. Pheiffer
Partner
Barnes & Thornburg

Mr. Pheiffer’s practice covers a broad spectrum of intellectual property issues, including domestic and international patent prosecution, patent opinion and clearance matters, patent litigation, domestic and international trademark prosecution and enforcement, and technology licensing matters. He is the former president of the preeminent intellectual property bar association in New England—the Boston Patent Law Association.

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Description

Correctly identifying the goods and services that a trademark applicant intends to associate with any proposed mark is critical. While it seems like a straightforward process, it is not. It calls for significant thought to determine what should and should not be included in the identification. How broad should the identification be? What are the potential implications of what is involved when also filing foreign applications and seeking to enforce trademark rights globally?

Further, counsel should pay special attention to drafting the identification because once the trademark application is filed, goods and services can no longer be added.

Of note, the UPSTO is cracking down on the intent-to-use and use in trademarks to combat fraud. What is included in the identification may make it more likely that the mark owner would be audited. Because such audits could undermine a company's enforcement of its mark, trademark counsel should carefully consider what to include in the identification of goods and services.

Listen as our authoritative panel reviews the requirements and then focuses on how much to include in the identification of goods and services and the considerations applicants should keep in mind. The panel will also outline obstacles to registration. The panel will discuss the Trademark Office's focus on cracking down on intent-to-use and use and the interplay of those audits with the identification of goods and services. The panel will offer best practices for crafting the identification of goods and services in trademark applications.

Outline

  1. Requirements
  2. What should/should not be included in the application
  3. Considerations when crafting identification of goods and services
    1. Single class application
    2. Multi-class application
    3. How broad or narrow
    4. Implications for international filings
  4. Implications of USPTO audits and interplay with identification of goods and services
  5. Best practices for crafting identification of goods and services

Benefits

The panel will review these and other essential issues:

  • What are the best practices for U.S. trademark counsel for crafting identifications of goods and services?
  • What key factors should U.S. trademark counsel consider when crafting identification of goods and services for applications in the U.S. and outside the U.S.?
  • How detailed or broad should identifications be generally and what specific circumstances might impact the analysis?
  • What is the Post Registration Proof of Use Audit Program and what is the Technology Evolution Pilot Program?