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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, September 15, 2020

  • 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 whether to file trademark applications using a parallel or a serial approach. The panel will examine the benefits and challenges of parallel applications as well as serial applications. The panel will offer best practices for determining how to pursue trademark protection.

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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Wesley D. Anderson
Associate General Counsel for Technology and Intellectual Property
UnitedHealth Group

Mr. Anderson acts as in-house IP counsel across the UnitedHealth Group enterprise, including for UnitedHealthcare and Optum. He specializes in trademark clearance, prosecution, and enforcement, as well as marketing and advertising compliance, copyright matters, IP and software licensing, and transactional matters. Mr. Anderson is a frequent contributor to The IP Book, published by Minnesota Continuing Legal Education.

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Description

Before adoption and use, potential trademarks are typically searched, cleared, and considered in parallel, not serially, thereby permitting several options to be considered at the same time. The applicant may file multiple intent-to-use applications in parallel. Further, when planning to file and seek protection outside the U.S., the parallel approach is often used.

However, sometimes taking a serial approach may be more appropriate. With certain types of applications, such as applications to register descriptive or non-traditional marks, filing serial applications may be a better option. Also, it is sometimes best to seek a registration of a mark on the Supplemental Register first, after which the mark can establish acquired distinctiveness, before applying for a registration on the Principal Register.

Trademark applicants and their counsel must understand the benefits and challenges of both parallel and serial approaches to maximize protection of the trademark.

Listen as our authoritative panel of trademark attorneys examines the circumstances that should be considered in determining whether and when to file trademark applications using a parallel or a serial approach. The panel will explore the benefits and challenges of parallel and serial applications in specific situations, and the best practices for each approach.

Outline

  1. Key factors in determining whether to file parallel or serial applications
    1. Timing
    2. Cost
    3. Intent-to-use or use-based
    4. Type of mark
    5. Clearance issues
  2. Benefits vs. challenges and best practices for parallel and serial applications
    1. Use-based applications
    2. Intent-to-use applications
      1. Bona fide intent for parallel contingent intent-to-use applications
    3. Clearance searching
      1. Timing of clearance searches
      2. Updating clearance searches for serial applications
    4. Flexibility of timeline and secrecy for product/brand launch
    5. Filing strategies in a crowded field
    6. International filing considerations
    7. Post-registration maintenance considerations
    8. Enforcement considerations
    9. Descriptive marks
    10. Non-traditional marks
  3. Question-and-answer session

Benefits

The panel will review these and other key issues:

  • When is a parallel approach the better option for trademark applications?
  • When preparing to launch a new brand, is a series or parallel approach to trademark clearance preferred?
  • What key considerations should counsel weigh when determining the better approach for trademark applications?