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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, April 9, 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 in understanding how the courts and USPTO view the issue of acquired distinctiveness in support of a trademark application. The panel will outline approaches that work--and those that don't work--in demonstrating acquired distinctiveness.

Faculty

Matthew D. Asbell
Partner
Lippes Mathias

Mr. Asbell, a partner and member of Lippes Mathias’ intellectual property team, works comfortably and efficiently with clients in diverse industries. Mr. Asbell's passion for his work in intellectual property arises from a deep appreciation for creativity, whether in the form of invention, design, expression, or branding and marketing. He assists clients in clearing, obtaining, enforcing, and defending trademark, patent, design and copyrights in the United States and throughout the world, while also advising on domain names, social media and related issues. Mr. Asbell serves as an adjunct professor of law and frequent guest lecturer at Fordham University and The Benjamin N. Cardozo School of Law (Yeshiva University), and has taught at Columbia University and the Instituto Superior de Derecho y Economia (ISDE) in Madrid, Spain. He regularly mentors new lawyers and law students. 

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Matthew L. Frisbee
Partner
Leason Ellis LLP

Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog. 

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Description

A trademark must either be inherently distinctive or have acquired a secondary meaning that distinguishes the goods to obtain protection in the United States. For marks found to lack inherent distinctiveness--particularly descriptive and geographically descriptive marks, among others--a showing of acquired distinctiveness can mean the difference between registration on the Principal Register and registration on the Supplemental Register or abandonment.

If the trademark applicant can demonstrate that its mark acquired distinctiveness in the marketplace, the USPTO may register the mark on the Principal Register despite a lack of inherent distinctiveness. To claim acquired distinctiveness under Section 2(f), counsel must submit evidence of use and promotion, such as consumer statements and advertising materials. To navigate the uncertainty of showing acquired distinctiveness, counsel must understand how the courts and the USPTO treat proof of acquired distinctiveness.

Our panel will guide trademark counsel in understanding how the courts and USPTO view the issue of acquired distinctiveness in support of a trademark application. The panel will outline approaches that work--and those that don't work--in demonstrating acquired distinctiveness

Outline

  1. What works and what doesn't to demonstrate acquired distinctiveness
  2. Acquired distinctiveness
    1. How the courts are treating it
    2. How the TTAB is treating it
  3. Emerging issues related to genericness
  4. Best practices

Benefits

The panel will review these and other relevant issues:

  • What strategies have trademark applicants used to show acquired distinctiveness?
  • How are the USPTO and the courts treating proffered evidence of acquired distinctiveness?
  • What best practices should counsel employ to demonstrate acquired distinctiveness and obtain trademark protection?