Responding to Trademark Office Actions Raising Specimen Refusals, Disclaimer Requirements, Requests for Information, Domicile Address, and Suspension Inquiries

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

Recording of a 90-minute premium CLE video webinar with Q&A


Conducted on Tuesday, February 9, 2021

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Program Materials

This CLE webinar 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.

Description

Our experienced practitioners share their insights and strategies for responding to common issues that arise during the trademark registration process, and will also provide updates on the USPTO’s August 2019 rule requiring trademark owners to provide their domicile address. From evaluating the validity of a disclaimer request to responding to an Examining Attorney’s request for information or submitting substitute specimens, the speakers will provide an in-depth analysis of the issues and options for consideration in counseling your clients on responding to Office actions raising these issues. They will also advise about options for requesting the application be suspended or removed from suspension for further action.

Listen as our authoritative panel of IP attorneys discusses 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.

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Outline

  1. Specimens
    1. Complying with the rule requiring URL and date the website was accessed
    2. Refusal on basis of lack of agreement between drawing and specimen (mutilation)
    3. Timing considerations for substitute specimens
    4. Option to amend to 1(b)
    5. Post-Registration Audit and new fee to delete goods/services
  2. Disclaimers
    1. Evaluating the evidence provided in the Office action
    2. Recent TTAB case stating that disclaimers must apply to an entire class and not just certain goods and services, reversing earlier USPTO practice. In re UST Global (Singapore) Pte. Ltd., 2020 USPQ2d 10435 (TTAB 2020)
    3. Gathering evidence to support arguments against a disclaimer
    4. Option of a partial disclaimer
  3. Domicile Address
    1. Street address required by new rule
    2. Entering the domicile address in a “shielded” fashion
    3. Filing a petition to waive requirement for street address
    4. Providing documentation to support a claimed domicile address
    5. Use of street address of postal mail facilities
  4. Requests for information
    1. Authorized by TMEP § 814. to obtain information reasonably necessary for examination
    2. Responding when the goods/services are not yet offered
    3. Responding when the specimen was refused for reasons such as appearing to be a digital mockup
  5. Requesting Suspension and Responding to Suspension inquiries
    1. Prior pending applications
    2. Cited registration is in grace period for filing post-registration maintenance documents
    3. Awaiting issuance of a home country registration
    4. Institution or disposition of a TTAB proceeding
    5. 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

Frisbee, Matthew
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

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

Partner
Kelly IP

Ms. Sullivan helps clients select, register, and enforce their trademarks and copyrights, representing her clients in...  |  Read More

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