Responding to Trademark Office Actions: Raising Specimen Refusals, Disclaimer Requirements, Requests for Information
Overcoming Challenges With Descriptiveness, Likelihood of Confusion, Blocking Citations, and More
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel on addressing refusals of registrations, from substitute specimens to disclaimers and suspension inquiries. The panel will offer strategies for counsel to overcome refusals that arise in the trademark application process.
Outline
- Specimens
- Complying with the rule requiring URL and date the website was accessed
- Refusal based on lack of agreement between drawing and specimen (mutilation)
- Timing considerations for substitute specimens
- Option to amend to 1(b)
- Post-registration audit and new fee to delete goods/services
- Disclaimers
- Evaluating the evidence provided in the office action
- Recent TTAB cases
- Gathering evidence to support arguments against a disclaimer
- Option of a partial disclaimer
- Domicile address
- Street address required by the new rule
- Entering the domicile address in a "shielded" fashion
- Filing a petition to waive the requirement for street address
- Providing documentation to support a claimed domicile address
- Use of street address of postal mail facilities
- Requests for information
- Authorized by TMEP Section 814 to obtain information reasonably necessary for examination
- Responding when the goods/services are not yet offered
- Responding when the specimen was refused for reasons such as appearing to be a digital mockup
- Requesting suspension and responding to suspension inquiries
- Prior pending applications
- Cited registration is in a grace period for filing post-registration maintenance documents
- Awaiting issuance of a home country registration
- Institution or disposition of a TTAB proceeding
- Timing considerations
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
Matthew L. Frisbee
Attorney
Leason Ellis
Mr. Frisbee assists clients with a variety of trademark matters, with an emphasis on U.S. trademark prosecution and... | Read More
Mr. Frisbee assists clients with a variety of trademark matters, with an emphasis on U.S. trademark prosecution and counseling. He routinely counsels clients regarding the availability and registration of trademarks, prosecutes trademark applications, and represents clients in domain name disputes and proceedings before the TTAB. In addition, Mr. Frisbee has experience drafting IP licenses, assignments and other agreements.
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Kelu L. Sullivan
Partner
Kelly IP
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.
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