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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

    Thursday, November 5, 2020

  • 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 provide guidance to trademark counsel on excusable nonuse of marks, including the impact of COVID. The panel will examine recent cases and the lessons learned from them. The panel will also discuss use audits and the implications of those audits for nonuse. The panel will examine how temporary nonuse is handled in jurisdictions outside the U.S.

Faculty

Farah Bhatti
Shareholder
Buchalter

Ms. Bhatti focuses her practice on all aspects of trademark prosecution including advising, counseling and securing trademark protection for clients, with an emphasis on the worldwide selection and enforcement of trademarks. She also works closely with clients in formulating their domestic and international trademark protection and registration strategies. Ms. Bhatti draws on her experience in private practice as well as her previous position as a trademark examining attorney at the USPTO. While there, she examined more than 2,000 trademark applications and represented the USPTO before the TTAB.

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Scott W. Pink
Special Counsel
O'Melveny & Myers LLP

Mr. Pink advises technology, media, entertainment, and a variety of consumer product and franchise companies on issues of intellectual property counseling; social media law; cybersecurity and privacy; and advertising, marketing, and promotions law. He had led many privacy and security compliance initiatives worldwide for clients, including GDPR compliance, HIPAA compliance audits, compliance with financial security regulations (NYDFS) and security audits for cryptocurrency and blockchain companies. A former general counsel for a major media company, Mr. Pink brings an insider’s perspective to his broad-based practice.

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Description

Thousands and thousands of trademarks are due for renewal each year and the time of COVID-19 is no different. COVID has caused the temporary shutdown of some businesses, which may include the nonuse of some marks.

If a mark owner stops using a trademark for a sufficiently long period, his rights may become vulnerable to third-party claims of abandonment. To maintain a federal trademark registration, trademark owners periodically must file declarations of continued use with the USPTO. COVID per se does not automatically suspend the duty to file such declarations of use. However, the failure to do so or to explain the reasons for non-use would result in loss of registrations and could give rise to claims that common law rights in the marks have been abandoned.

If the mark is not in use when the owner must file the declaration, owners should consider the option of claiming that the nonuse is excusable. When claiming excusable nonuse, owners should include additional information than would typically be included. Also, counsel may consider the use of a declaration of excusable nonuse in the alternative.

Listen as our authoritative panel of IP attorneys examines excusable nonuse, including the impact of COVID and the guidance from recent cases. The panel will also review use audits, their implications, and how non-U.S. jurisdictions handle temporary nonuse.

Outline

  1. Excusable nonuse
  2. Temporary nonuse of trademarks due to COVID
  3. Use audits and their implications
  4. Nonuse in non-U.S. jurisdictions

Benefits

The panel will review these and other relevant issues:

  • When can an owner renew its trademark registration despite nonuse based on excusable nonuse?
  • Can COVID-19 provide a sufficient basis for claiming excusable nonuse of a mark?
  • What are the long term implications of COVID-19 on the incontestability of trademarks?