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

Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More

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


Wednesday, September 26, 2018 (in 4 days)

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

or call 1-800-926-7926
Program Materials

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.

Description

With robust 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, and 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.

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Outline

  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

Benefits

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?

Faculty

Han, Erica
Erica L. Han

Counsel
Ropes & Gray

Ms. Han advises consumer branded product companies in relation to global brand strategy, trademark clearance and...  |  Read More

Strickland Ricketts, Allison
Allison Strickland Ricketts

Partner
Fross Zelnick Lehrman & Zissu

Ms. Rickett’s practice focuses almost exclusively on U.S. trademark selection, clearance, registration,...  |  Read More

Sullivan, Kelu
Kelu L. Sullivan

Of Counsel
Kelly IP

Ms. Sullivan is a trademark and copyright lawyer who focuses on providing practical and realistic advice to help...  |  Read More

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