BarbriSFCourseDetails
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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

    Tuesday, June 7, 2022

  • 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 IP counsel on trademark abandonment in the Courts and before the TTAB. The panel will address how an abandonment decision affects a global brand and offer best practices on how to avoid abandonment.

Faculty

James R. Hastings
Of Counsel
Rothwell Figg Ernst & Manbeck PC

Mr. Hastings has more than 20 years of experience representing corporate and entrepreneurial brand owners in all facets of trademark law and brand protection and enforcement. Previously, Mr. Hastings served as in-house counsel to a well-known national catalog retailer. He is author of the online publication, Trademark Opposition Lawyer—a guide for CEOs and in-house counsel about contested proceedings before the U.S. Trademark Trial and Appeal Board.

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Donna M.D. Thomas
Partner
Goodell DeVries Leech & Dann, LLP

Ms. Thomas guides clients in commercial and intellectual property transactions, from publicly traded corporations making mega-buck acquisitions to the clearance, registration, licensing, protection and defense of copyrights and trademarks for individuals and businesses, small and large. Ms. Thomas has taught copyright and media law as an adjunct professor at the University of Baltimore. She is also a frequent lecturer on intellectual property subjects, including teaching trademark law as an instructor for the Maryland Bar Association, and she is a frequent lecturer at Association of Corporate Counsel Chapters around the country. Ms. Thomas also served as the Chair of the Intellectual Property Law Section of the Maryland State Bar Association.

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Description

Under 15 USC 1127, a trademark is abandoned when its use has been discontinued without intent to resume use or when the mark's owner engages in acts or omissions that cause the mark to become generic or otherwise lose its significance as a mark. A frequent basis for a claim of trademark abandonment is the naked licensing of a mark, which occurs when a trademark owner permits a third party to use its mark without retaining and exercising control over the quality of the products or services sold under the mark. Once a mark is abandoned, the trademark owner loses all rights in the abandoned mark.

The party asserting abandonment bears the burden of proof. Under 15 USC 1127, nonuse of a mark for three or more consecutive years is prima facie evidence of abandonment. Evidence indicating a valid reason for the suspension of use and an intent to resume use of the mark shortly can overcome the presumption of abandonment.

Abandonment can be a defense against trademark infringement allegations and provide grounds for cancellation of a mark. Counsel and mark owners must understand abandoned trademarks--their own or their competitor's--and the proceedings that accompany abandonment.

Listen as our authoritative panel of IP attorneys examines trademark abandonment and the corresponding proceedings at the TTAB and in federal cases. The panel will also address the bases for filing an affidavit of excusable nonuse with the USPTO so that registration is not canceled and discuss how an abandonment decision affects a global brand.

Outline

  1. Abandonment proceedings at TTAB
  2. Abandonment in federal cases
  3. Bases for filing an affidavit of excusable nonuse with the USPTO
  4. How an abandonment decision affects a global brand

Benefits

The panel will review these and other crucial issues:

  • How can you identify an abandoned trademark?
  • How can counsel demonstrate abandonment of a mark?
  • What impact can naked licensing have on trademark rights and abandonment?
  • What steps can you take to document your trademark use to protect against claims of abandonment?