Responding to Trademark Office Actions: Assessing Response Alternatives and Persuading the Examiner
Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More
Recording of a 90-minute CLE webinar with Q&A
This CLE webinar will guide 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.
- Strategic considerations for counsel before responding to an office action
- Overcoming trademark office rejections
- Key problem areas to anticipate and prepare to respond and follow up
- Strategies for overcoming issues outlined in Trademark Office Actions
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?
Erica L. Han
Ropes & Gray
Ms. Han advises consumer branded product companies in relation to global brand strategy, trademark clearance and... | Read More
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.Close
Allison Strickland Ricketts
Fross Zelnick Lehrman & Zissu
Ms. Rickett’s practice focuses almost exclusively on U.S. trademark selection, clearance, registration,... | Read More
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.Close
Kelu L. Sullivan
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.Close