BarbriSFCourseDetails
  • videocam On-Demand
  • signal_cellular_alt Intermediate
  • card_travel Trademark and Copyright
  • schedule 90 minutes

Registering Trademarks: Overcoming Section 2(d) Likelihood of Confusion Refusals

$347.00

This course is $0 with these passes:

CLE
ALL
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Description

Under Section 2(d) of the Lanham Act, examining attorneys may refuse registration of a mark that so resembles an already registered mark that a consumer is likely to be confused as to the source of the products or services of the applicant. Determining the likelihood of confusion is made by applying the 13 factors outlined in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973). Some key factors are the similarity of the marks, the similarity of the goods or services, the similarity of established trade channels, the strength of the registered mark, the sophistication of purchasers, and the number and nature of similar marks in use on similar goods and services.

Before filing, trademark counsel should evaluate facts and make critical decisions to avoid refusal under Section 2(d). After an application is filed, if it is refused under Section 2(d), trademark counsel often have several options for overcoming such refusals. Frequently, trademark counsel mistakenly defaults only to arguing for coexistence, without considering the other options that might be available. For example, the registered mark may be abandoned or registered for an overbroad identification of goods or services. In that case, counsel may be able to petition for cancellation or partial cancellation of the mark and avoid arguing for coexistence altogether.

Listen as our authoritative panel examines the key du Pont factors, discusses strategies for avoiding refusal, and explores opportunities for responding to rejections under Section 2(d) of the Lanham Act.

Presented By

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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Draeke H. Weseman
Of Counsel
Greenberg Traurig LLP

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.

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Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, July 9, 2024

  • schedule

    1:00 p.m. ET./10:00 a.m. PT

  1. History, purpose, and fundamental principles of Section 2(d)
  2. The du Pont factors for determining the likelihood of confusion
  3. Best practices for avoiding a Section 2(d) refusal
  4. Strategies for overcoming refusals under Section 2(d)
  5. Examples from recent TTAB decisions

The panel will review these and other relevant issues:

  • What strategies have trademark applicants used successfully to show the lack of confusion and obtain trademark protection despite Section 2(d) refusals?
  • How are the USPTO examining attorneys and the Board treating evidence for and against the likelihood of confusion?
  • What best practices should counsel employ to avoid or overcome Section 2(d) refusals?