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

Trademark Application Pre-Filing Strategies: Overcoming the Obstacles

Anticipating Blocking Citations, Determining Applicant/Owner, Adhering to Settlement Agreements, Filing Under Madrid Protocol

$347.00

This course is $0 with these passes:

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Description

Many factors go into drafting a proposed trademark filing, including selecting the basis, anticipating blocking citations, adhering to settlement agreements, the timing of product launches, and deadlines for filing proof of use.

Counsel face a myriad of key, complex decisions: Should the goods or services be described broadly or narrowly? Are multi-class applications strategically better than single-class applications? When should stylized wordmarks logos be filed rather than plain block letters? When should a claim to color be made? When submitting a specimen of use, is it better to show the use for one good per class or all goods in each class?

IP counsel also face challenges in preparing applications to obtain the best protection, which is not necessarily the broadest protection. It is also important to bear in mind that all submissions are fully accessible worldwide as well as consider confidentiality issues.

Listen as our authoritative panel of trademark attorneys examines pre-filing strategies for trademark applications. The panel will discuss pre-filing considerations, from identifying the proper owner to the impact of licenses to the timing of product launches. The panel will also offer best practices for overcoming anticipated obstacles to registration.

Presented By

Jacqueline M. Lesser
Counsel
BakerHostetler

Ms. Lesser has represented trademark and copyright clients for more than 25 years, protecting and defending clients in the U.S. and internationally. Her clients include a wide array of companies in the consumer products, apparel, food and beverage, entertainment, pharmaceutical, media, and technical industries. Bridging litigation and transactional practices,Ms. Lesser supports technology and media clients on protection of their brands and creative content. She also works with clients on acquisition and commercialization of technologies, and on enforcement and defense of rights in federal court and administrative forums. As a trusted counselor and advisor, Ms. Lesser partners with her clients to achieve favorable results.

Jackie Lesser
Ice Miller LLP
Rory P. Pheiffer
Partner
Barnes & Thornburg

Mr. Pheiffer’s practice covers a broad spectrum of intellectual property issues, including domestic and international patent prosecution, patent opinion and clearance matters, patent litigation, domestic and international trademark prosecution and enforcement, and technology licensing matters. He is the former president of the preeminent intellectual property bar association in New England—the Boston Patent Law Association.

Laura J. Winston
Principal and Chair of the Intellectual Property Practice Group
Offit Kurman

Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights, and the internet, representing a broad range of both domestic and international clients from individual business owners and small startup ventures to established Fortune 500 and publicly traded companies. She is known for her strategic counseling when registering trademarks and has been referred to as a litigation avoidance advocate due to her thoughtful and creative solutions for avoiding or resolving disputes. She covers the full gamut of trademark services, whether it involves transactions, searching and clearance, acquisition and registration, opposition and cancellation proceedings, and domain name dispute resolution. In the circumstances where it is not possible to stay out of the courtroom, Ms. Winston is prepared and willing to handle litigation matters on behalf of her clients.  

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


  • Live Online


    On Demand

Date + Time

  • event

    Tuesday, August 27, 2024

  • schedule

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

  1. Pre-filing considerations
    1. Types of searches
    2. Identifying the right owner/applicant
    3. Filing basis
    4. Goods and classes
  2. Pre-filing strategies
    1. The mark
    2. Specimens of use
    3. Anticipating blocking citations
    4. Anticipating other types of office actions
  3. Particular issues
    1. Correcting filing errors
    2. Trade dress
    3. Licensed users
    4. Timing of product launches
    5. Deadlines for filing proof of use
    6. Fraud
    7. Adhering to settlement agreements

The panel will review these and other key issues:

  • What type of search should be conducted before filing a trademark application?
  • What is the impact of having a license in place on a mark?
  • When should counsel show use for one good or class, and when is it best to show for all?