Registering Trademarks: Overcoming Descriptive, Geographic, and Surname Refusals

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Tuesday, December 19, 2023
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will guide IP counsel on avoiding or overcoming potential roadblocks to trademark registration under Section 2(e) of the Lanham Act. The panel will discuss the descriptive, geographic, and surname requirements and offer best practices for overcoming descriptive, geographic, and surname refusals.
Faculty

Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and management of domestic and international trademark portfolios. He also has significant experience assisting clients with trademark enforcement, opposition and cancellation proceedings; brand protection programs; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings (UDRPs); and trademark licensing. He provides tailored advice for handling IP issues involving social media; IP due diligence and IP licensing; copyright counseling, registration, protection and litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.

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.
Description
Section 2(e) of the Lanham Act provides several potential obstacles to trademark registration. Whether a registration is refused because it is merely descriptive or misdescriptive, geographic, or a surname, trademark counsel must prepare for these potential hurdles when drafting the mark application or overcoming such refusals.
A showing of secondary meaning, public perception of a mark, or proving acquired distinctiveness can be the pathway to successful registration. However, there are many factors to consider when deciding the best way to respond to a refusal.
Listen as our authoritative panel examines the potential roadblocks to trademark registration under Section 2(e) of the Lanham Act. The panel will discuss the descriptive, geographic, and surname requirements and provide guidance on strategies for overcoming descriptive, geographic, and surname refusals.
Outline
- Descriptive, geographic, and surname requirements
- Lanham Act Section 2(e) potential roadblocks
- Overcoming descriptive, geographic, and surname refusals
Benefits
The panel will review these and other key issues:
- What are some of the common errors that prevent a successful trademark registration?
- What are the critical considerations for trademark counsel when responding to a refusal?
- What other strategies should counsel implement to increase the likelihood of mark registration after a refusal?
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