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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, June 10, 2021

  • 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 strategies for assessing, avoiding, and overcoming trademark incapability, failure to function, and merely informational trademark registration refusals from the USPTO.

Faculty

Stephen R. Baird
Shareholder
Greenberg Traurig LLP

Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.

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Tucker A. Chambers
Attorney
Miscellaneous

Mr. Chambers works with clients on a variety of intellectual property matters, focusing on trademark issues. He handles trademark clearance, prosecution, eCommerce enforcement, litigation, and appeals, and counsels clients regarding brand management and IP enforcement matters. He has deep experience litigating proceedings before the Trademark Trial and Appeal Board (TTAB), in addition to trademark and copyright infringement litigation in federal court. He also has experience litigating domain name disputes and managing online IP enforcement programs on eCommerce platforms.

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Alexandra A. Holt
Attorney
Greenberg Traurig LLP

Ms. Holt focuses her practice on the clearance, maintenance, and enforcement of intellectual property rights, including trademarks, copyrights, and rights of publicity. She has experience evaluating the strength, availability, and enforceability of new brand names, registering copyrights, recovering infringing domain names from cybersquatters, and helping clients to implement domain name enforcement strategies, recovering over 200 infringing domain names on behalf of Greenberg Traurig’s clients to date. She also enforces clients’ intellectual property rights on social media and on user-generated content sites.

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Description

Learn on the one hand how “The Best Beer in America” has been found so highly descriptive that it is incapable of serving as a trademark while on the other hand “The Greatest Show on Earth” has been recognized and protected from dilution as famous mark, fully capable of performing as a valid trademark.

Gone are the days when easily obtaining a Supplemental Registration for a merely descriptive mark is a routine occurrence. More and more often, the USPTO is rejecting trademark applications because the applied-for matter is considered incapable of serving as a trademark. So-called merely informational trademark refusals have been on the rise over the last four years at the USPTO.

With merely informational matter, there is no possibility of proving acquired distinctiveness for registration on the Principal Register and in the alternative, there is no possibility of registration on the Supplemental Register. Yet, these trademark incapability rulings are being made without a showing of genericness.

Among the types of subject matter that are targeted in merely informational refusals are widely used or common marketing messages. Indeed, TMEP §1202.04 directs Examining Attorneys to refuse registration when the claimed mark merely conveys general information about the goods or services, or when the claimed mark can be considered a highly laudatory claim of superiority, yet these kinds of refusals sound a lot like subject matter that used to be refused on mere descriptiveness grounds. Only now, when trademark incapability is found with this kind of subject matter, the new challenge is that the rejection cannot be overcome with a showing of acquired distinctiveness, and no amendment to the Supplemental Register is possible. Basically, the outcome is the same as genericness without the rigor and necessary evidence to support genericness.

Listen as our authoritative panel of trademark attorneys examines trademark incapability, failure to function, and merely informational trademark refusals. The panel will discuss strategies for avoiding these kinds of refusals and also will explore opportunities for responding to rejections and overcoming the refusals.

Outline

  1. Informational refusals: categories, trends
    1. Matter merely conveys general information or is highly laudatory
    2. Widely used or common messages
    3. Religious matter
  2. Strategies for avoiding refusals
  3. Best practices for responding to and overcoming refusals

Benefits

The panel will review these and other critical issues:

  • How can trademark counsel position an application to avoid the USPTO issuing failure to function and merely informational refusals?
  • What are the primary considerations for trademark counsel when responding to merely informational and failure to function office actions?
  • What are the areas that have proven to be red flags for the USPTO?
  • What strategies should trademark counsel implement to increase the likelihood of mark registration after the office action is issued?