Demonstrating Use in Commerce for Trademark Registration and Enforcement
Navigating Use in Commerce Requirements Under the Lanham Act and for Purposes of Registration
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel for establishing proper use of a mark in commerce under the Lanham Act for purposes of securing registration, maintaining registration, and/or establishing priority under Section 2(d), along with best practices to implement going forward.
Outline
- Use in commerce
- Under the Lanham Act
- In the rules put forth by the USPTO for purposes of securing trademark registration and maintaining trademark registration
- Demonstrating proper and acceptable evidence of use in commerce, and to avoid abandonment, based on select case law from the TTAB and the federal courts
- Analogous use to establish priority
- Bona fide intent to use in commerce to support a trademark application under Section 1(b)
- Best practices for demonstrating use in commerce
Benefits
The panel will review these and other noteworthy issues:
- How can counsel improve the chances of the USPTO accepting a specimen of use?
- How can a rights holder establish priority in a mark before making use in commerce?
- How can a rights holder ensure that it is well positioned to defend a challenge about its priority date?
- Does an applicant really need to have a "bona fide" intention to use a mark in commerce before filing an intent-to-use application?
Faculty
Patrick J. Gallagher
Partner
Barnes & Thornburg
Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and... | Read More
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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Renee Kraft
Chief Trademark Counsel
Target Corporation
Ms. Kraft is Chief Trademark Counsel at Target Corporation.
| Read MoreMs. Kraft is Chief Trademark Counsel at Target Corporation.
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Kate Saba
Attorney
Debevoise & Plimpton
Ms. Saba is an associate in the Litigation Department and a member of the firm’s Intellectual Property Litigation... | Read More
Ms. Saba is an associate in the Litigation Department and a member of the firm’s Intellectual Property Litigation Group. She has litigated trademark, copyright, design patent, and false advertising matters in federal court and before the Trademark Trial and Appeals Board. She represents clients across a range of industries including the fashion, technology, cosmetics, and pharmaceutical industries. Ms. Saba is Co-Chair of the American Bar Association’s Trademark Litigation Committee, Vice-Chair of the American Bar Association’s Copyright Legislation Committee, and a member of the International Trademark Association’s Designs Committee. She has co-authored amicus briefs filed before the Sixth and Ninth Circuits on behalf of the International Trademark Association and before the United States Supreme Court on behalf of the American Bar Association. Ms. Saba has guest lectured on trademark and trade dress issues at New York University School of Law.
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