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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, May 9, 2023

  • 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 webinar will guide IP counsel on the trademark prosecution of common words or phrases. The panel will discuss the refusals common words or phrases may run into at the U.S. Patent and Trademark Office (USPTO) and examine recent TTAB decisions involving such words or phrases. The panel will discuss how practitioners should handle searches for and clearance of marks involving common words and phrases and offer best practices for prosecuting a trademark application for these words and phrases.

Faculty

Patrick J. Gallagher
Partner
Barnes & Thornburg

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.

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Molly R. Littman-Johnson
Attorney
Greenberg Traurig LLP

Ms. Littman-Johnson focuses her practice on intellectual property litigation and enforcement. She has significant experience representing clients in federal courts throughout the United States and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Ms. Littman-Johnson's experience also includes representing clients in Uniform Domain Name Dispute Resolution (UDRP) proceedings, and protecting and enforcing clients’ intellectual property rights online and on social media. In addition to her intellectual property litigation practice, she advises on brand management and protection in the United States and globally, and on copyright development and registration.

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Mayura I. Noordyke
Trademark Counsel, Global IP
Medtronic

Ms. Noordyke is an intellectual property attorney and serves as Trademark Counsel, Global IP at Medtronic.  She provides counsel to the company on all issues related to trademark and copyright law. Ms. Noordyke was previously in private practice, focusing on trademark clearance, investigation, prosecution, licensing, branding, social media, cybersquatting, internet domain name disputes, copyright matters, and advertising and promotions.

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Description

Trademarking common words can define a business, but it can be complicated. Trademarking a single word is not always possible. One of the best known examples of trademarking a common word is by Apple Inc. The company would not have been able to trademark "apple" if it was selling apples. Other examples include Shell, Time, and Caterpillar. While these words are common, none of them describe the company or product it represents.

One of the challenges that arises when seeking to register a common word is that another company has already registered the mark. However, this does not necessarily preclude registration. For example, The Ohio State University trademarked the word "the," submitting its trademark application months after Marc Jacobs applied for trademark protection for the word "the."

When planning to trademark a common word or phrase, it is critical for companies and their counsel to conduct a comprehensive trademark search before filing an application. Companies should also be aware of the types of refusals that may result and take steps to minimize the risk of such refusals. Further, if a company successfully trademarks the word, it does not mean that others cannot use the common word.

Listen as our authoritative panel of IP attorneys examines trademarking protection for common words and phrases. The panel will address the refusals common phrases may run into at the USPTO. The panel will also discuss recent TTAB decisions involving such phrases and how practitioners should deal with searches for and clearance of marks involving phrases. The panel will offer best practices for prosecuting a trademark application for common words.

Outline

  1. Trademarking common words and phrases
    1. Requirements
    2. Challenges
    3. Refusals
  2. Recent TTAB and court decisions
  3. Clearance searches
  4. Best practices for trademarking common words

Benefits

The panel will review these and other relevant issues:

  • What types of refusal has the TTAB used to deny registration of common words or phrases?
  • What best practices should counsel employ to register a trademark for a common word or phrase?