Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner

Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Deceptiveness, and More

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

Tuesday, September 12, 2017
1:00pm-2:30pm EDT, 10:00am-11:30am PDT

This CLE webinar will provide guidance for trademark counsel responding to Trademark Office Actions on the key considerations and potential alternative responses. The panel will offer strategies for counsel to overcome PTO objections that arise in the trademark application process.


With solid planning, trademark counsel can avoid some issues that cause a trademark application to be rejected or subject to PTO objections, but if the USPTO is not satisfied, it will issue an office action listing grounds for refusal.

When responding to a Trademark Office Action, counsel must consider the impact of statements submitted, the evidence available to support the mark, the PTO’s grounds for refusal, and the potential for clarifying or limiting the mark.

Counsel must then strategically plan and implement a successful approach to overcome the PTO’s objections. These options may include investigating cited registrations, filing cancellation actions, approaching third parties for a consent and coexistence agreement, gathering evidence to demonstrate the relatedness (or not) of certain goods and services, gathering evidence to support a claim of acquired distinctiveness, etc., depending on the refusal.

Listen as our authoritative panel discusses what trademark counsel must consider when presented with a Trademark Office Action and ways to overcome rejections or refusals. The panel will also discuss the areas where many problems occur and offer tactics for surmounting these problems.


  1. Strategic considerations for counsel before responding to an office action
  2. Overcoming trademark office rejections
  3. Key problem areas to anticipate and prepare to respond and follow up
  4. Strategies for overcoming issues outlined in Trademark Office Actions


The panel will review these and other key issues:

  • What are the key 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?


Erica L. Han, Counsel
Ropes & Gray, Boston

Ms. Han advises consumer branded product companies in relation to global brand strategy, trademark clearance and prosecution, advertising clearance, and resolution of intellectual property disputes. She also represents a wide range of clients in a variety of transactions involving corporate and IP matters, including licensing and collaboration agreements, mergers and acquisitions, supply and distribution agreements, sponsorship and co-promotion arrangements, and other strategic commercial agreements. Ms. Han is a former Senior Intellectual Property Counsel at a leading global sports apparel and equipment company. 

Allison Strickland Ricketts, Partner
Fross Zelnick Lehrman & Zissu, Alexandria, Va.

Ms. Rickett’s practice focuses almost exclusively on U.S. trademark selection, clearance, registration, protection and enforcement. She has reviewed and evaluated thousands of trademark clearance searches and has filed and prosecuted more than 1,900 U.S. trademark applications. Ms. Ricketts is particularly adept at advising on strategic issues related to prosecution of a trademark application, especially when a trademark is to be protected worldwide and not just in the U.S. She also counsels on trademark protection and enforcement strategies, including establishing and evaluating effective trademark watching and monitoring services.

Kelu L. Sullivan, Of Counsel
Kelly IP, Washington, D.C.

Ms. Sullivan is a trademark and copyright lawyer who focuses on providing practical and realistic advice to help clients make strategic decisions in sync with their business goals. She has spent her entire career helping 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. Ms. Sullivan is particularly experienced in the management of large international trademark portfolios, and working with clients’ legal and business departments to achieve desired outcomes.

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Customer Reviews

The scope of the program provided in-depth information, as opposed to a general survey of issues/topics.

Joseph Zawila

Wolff & Samson

The speakers prepared good outlines and followed them during their presentations.

John Wm Ringer

Ringer Law Office

The speakers were knowledgeable and presented useful information.

Karen Shaffer-Levy

Reed Elsevier

Ms. Morrison provides trademark and brand protection services with significant industry intelligence in the food and beverage, restaurant, healthcare, entertainment, and technology industries. Her practice provides efficient counsel to support the domestic and foreign trademark maintenance, clearance, registration, strategic brand protection and enforcement, and licensing needs of her clients.

Sheila Fox Morrison

Davis Wright Tremaine

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Gesta Abols


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Intellectual Property Law Advisory Board

Stephen R. Baird


Winthrop & Weinstine

Charles S. Baker


Locke Lord

David S. Bloch


Winston & Strawn

Ian N. Feinberg


Feinberg Day Alberti & Thompson

Bassam N. Ibrahim


Buchanan Ingersoll & Rooney

Mark P. Wine



or call 1-800-926-7926

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