Evidentiary Issues at the TTAB: New Examination Guides, Generic Marks, Third-Party Registrations, Consumer Surveys

A live 90-minute premium CLE video webinar with interactive Q&A


Tuesday, August 31, 2021

1:00pm-2:30pm EDT, 10:00am-11:30am PDT

Early Registration Discount Deadline, Friday, August 13, 2021

or call 1-800-926-7926

This CLE webinar will guide trademark counsel on evidentiary issues at the Trademark Trial and Appeal Board (TTAB). The panel will discuss the new Examination Guides, particularly as they address generic marks, evidentiary issues related to third-party registrations, and consumer surveys. The panel will discuss the scope and timing of discovery. The panel will examine recent court treatment and offer best practices for navigating evidentiary issues at the TTAB.

Description

In 2020, the USPTO updated the Trademark Manual of Examining Procedure (TMEP) by issuing three Examination Guides that provide insights on the USPTO's approach to trademark decisions or rule changes. Following the Supreme Court's decision in Booking.com, the guidance addresses the issue of generic.com marks and establishing acquired distinctiveness and using consumer surveys.

Counsel use Notices of Reliance and Testimony declarations for admission of evidence. Direct evidence can be either through trial testimony deposition or by declaration. Self-authenticating evidence can be admitted through Notice of Reliance. Declarations also give the opposing party the option for cross-examination or challenging the testimony with a rebuttal affidavit.

Problems often arise when introducing and using evidence of third-party registrations despite TMEP explanation of the treatment of third-party registrations during examination and addresses issues on both cited and third-party registrations on appeal. Counsel should be prepared to cure a problem with the submission of improper evidence of third-party registrations. Evidence of third-party registrations and use can be relevant to show that a mark is descriptive, suggestive, or commonly used such that consumers look to other elements to distinguish the source.

Listen as our authoritative panel of IP attorneys examines evidentiary issues at the TTAB. The panel will discuss the new Examination Guides, particularly as they address generic marks, evidentiary issues related to third-party registrations, and consumer surveys. The panel will discuss the scope and timing of discovery. The panel will also examine recent court treatment and offer best practices for navigating evidentiary issues at the TTAB.

READ MORE

Outline

  1. New Examination Guides
    1. Generic marks
    2. Consumer surveys
    3. Third-party registrations
  2. Discovery
    1. Scope
    2. Timing
  3. Recent decisions
  4. Best practices

Benefits

The panel will review these and other priority issues:

  • What guidance do the new Examination Guides provide for generic.com marks?
  • What lessons can trademark counsel draw from recent decisions when assessing evidence?
  • What best practices should counsel employ when submitting or challenging evidence?

Faculty

Davis, Theodore
Theodore H. Davis, Jr.

Partner
Kilpatrick Townsend & Stockton

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of...  |  Read More

House, Dyan
Dyan M. House

Partner
Baker & McKenzie

Ms. House practices in the area of intellectual property. She advises clients in a variety of industries, including...  |  Read More

Attend on August 31

Early Discount (through 08/13/21)

Cannot Attend August 31?

Early Discount (through 08/13/21)

You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include program handouts.

To find out which recorded format will provide the best CLE option, select your state:

CLE On-Demand Video

Download