Responding to Trademark Office Actions: Raising Specimen Refusals, Requests for Information
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel on addressing refusals of registrations, from failure to function refusals, specimen refusals, suspension requests, to post-registration audits. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.
Outline
- Deadline to Respond
- Complying with different deadlines to respond to office actions
- Requesting suspension and responding to suspension inquiries
- Prior pending applications
- Cited registration is in a grace period for filing post-registration maintenance documents
- Awaiting issuance of a home country registration
- Institution or disposition of a TTAB proceeding
- Timing considerations
- Expungement and Reexamination Proceedings
- Basic bases for the new proceedings
- Deadlines to respond
- Practical considerations on when to file
- MyUSPTO Verification Requirement
- Attorneys
- Paralegals
- Sponsorship of Paralegals
- Requests for information
- Authorized by TMEP Section 814 to obtain information reasonably necessary for examination
- Responding when the goods/services are not yet offered
- Responding when the specimen was refused for reasons such as appearing to be a digital mockup
- Specimens
- Complying with the rule requiring URL and date the website was accessed
- Refusal based on lack of agreement between drawing and specimen (mutilation)
- Timing considerations for substitute specimens
- Option to amend to 1(b)
- Post-registration audit and new fee to delete goods/services
- Failure to Function/Common Phrase Refusal
- Recent decisions and best way to overcome such refusals
Benefits
The panel will review these and other critical issues:
- What are the primary considerations for trademark counsel when responding to an office action?
- What are the areas that have proven to be red flags for the PTO?
- What other strategies should counsel implement to increase the likelihood of mark registration after the office action is issued?
Faculty
Matthew L. Frisbee
Partner
Leason Ellis
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and... | Read More
Mr. Frisbee helps clients to develop tailored strategies for protecting and enforcing their brands in the U.S. and around the world. He routinely guides clients from trademark selection and clearance through registration and beyond, emphasizing a pragmatic and strategic approach. Mr. Frisbee also counsels brand owners regarding the intersection of trade dress, copyright, and design patent laws to protect product designs. He represents clients in trademark and copyright disputes and enforcement efforts, including handling proceedings before the Trademark Trial and Appeal Board, managing multi-jurisdictional disputes, and negotiating settlement agreements. Mr. Frisbee’s transactional experience covers IP licensing, assignments, and due diligence. He serves on the International Trademark Association’s U.S. Patent and Trademark Office Committee, which advocates to the USPTO on behalf of the trademark community. Mr. Frisbee also regularly appears as a panelist on IP topics for CLE presentations hosted by Strafford and has written articles published in the INTA Bulletin and IP Watchdog.
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Kelu L. Sullivan
Partner
Kelly IP
Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in... | Read More
Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in all aspects of trademark and copyright law, including portfolio management, licensing and litigation. She is particularly experienced in the management of large international trademark portfolios, and working with clients’ legal and business departments to achieve desired outcomes. She represents clients in federal district and appellate courts, managing every aspect of litigation, from complaints, to discovery, to presentation of the case in front juries. She has also presented difficult trademark cases on appeal, and successfully overturned three lower tribunal decisions.
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