Trademark Application Pre-Filing Strategies: Overcoming the Obstacles
Anticipating Blocking Citations, Determining Applicant/Owner, Adhering to Settlement Agreements, Filing Under Madrid Protocol
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide IP counsel on effective strategies before a trademark application is filed. The panel will discuss pre-filing considerations and offer best practices for overcoming pre-filing obstacles for trademark applications.
Outline
- Pre-filing considerations
- Types of searches
- Identifying the right owner/applicant
- Filing basis
- Goods and classes
- Pre-filing strategies
- The mark
- Specimens of use
- Anticipating blocking citations
- Anticipating other types of office actions
- Particular issues
- Correcting filing errors
- Trade dress
- Licensed users
- Timing of product launches
- Deadlines for filing proof of use
- Fraud
- Adhering to settlement agreements
Benefits
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?
Faculty
Jacqueline M. Lesser
Partner
Ice Miller
Ms. Lesser has represented trademark and copyright clients for more than 25 years, protecting and defending clients in... | Read More
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.
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Rory P. Pheiffer
Partner
Barnes & Thornburg
Mr. Pheiffer’s practice covers a broad spectrum of intellectual property issues, including domestic and... | Read More
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.
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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... | Read More
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.
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