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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, January 30, 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 addressing refusals of registrations, from failure to function refusals, specimen refusals, suspension requests, to post-registration audits. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.

Faculty

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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Kelu L. Sullivan
Partner
Kelly IP, LLP

Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in all aspects of trademark and copyright law, including portfolio management, licensing and litigation. She is particularly experienced in the management of large international trademark portfolios, and working with clients’ legal and business departments to achieve desired outcomes. She represents clients in federal district and appellate courts, managing every aspect of litigation, from complaints, to discovery, to presentation of the case in front juries. She has also presented difficult trademark cases on appeal, and successfully overturned three lower tribunal decisions.

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Description

Our experienced practitioners share their insights and strategies for responding to common issues during the trademark registration process and will also provide updates on the current USPTO rules.

From evaluating the validity of failure to function refusal, to responding to an examining attorney's request for information or submitting substitute specimens, the speakers will provide an in-depth analysis of the issues and options for consideration in counseling your clients on responding to office actions raising these issues. They will also advise about requesting the application be suspended or removed from suspension for further action.

Listen as our authoritative panel of IP attorneys discusses refusals of registrations, from substitute specimens to disclaimers and suspension inquiries. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.

Outline

  1. Deadline to Respond
    1. Complying with different deadlines to respond to office actions
  2. Requesting suspension and responding to suspension inquiries
    1. Prior pending applications
    2. Cited registration is in a grace period for filing post-registration maintenance documents
    3. Awaiting issuance of a home country registration
    4. Institution or disposition of a TTAB proceeding
    5. Timing considerations
  3. Expungement and Reexamination Proceedings
    1. Basic bases for the new proceedings
    2. Deadlines to respond
    3. Practical considerations on when to file
  4. MyUSPTO Verification Requirement
    1. Attorneys
    2. Paralegals
    3. Sponsorship of Paralegals
  5. Requests for information
    1. Authorized by TMEP Section 814 to obtain information reasonably necessary for examination
    2. Responding when the goods/services are not yet offered
    3. Responding when the specimen was refused for reasons such as appearing to be a digital mockup
  6. Specimens
    1. Complying with the rule requiring URL and date the website was accessed
    2. Refusal based on lack of agreement between drawing and specimen (mutilation)
    3. Timing considerations for substitute specimens
    4. Option to amend to 1(b)
    5. Post-registration audit and new fee to delete goods/services
  7. Failure to Function/Common Phrase Refusal
    1. Recent decisions and best way to overcome such refusals

Benefits

The panel will review these and other critical issues:

  • What are the primary considerations for trademark counsel when responding to an office action?
  • What are the areas that have proven to be red flags for the PTO?
  • What other strategies should counsel implement to increase the likelihood of mark registration after the office action is issued?