Trademark Application Pre-Filing Strategies: Overcoming the Obstacles

Anticipating Blocking Citations, Determining Applicant/Owner, Adhering to Settlement Agreements, Filing Under Madrid Protocol

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

Conducted on Tuesday, June 27, 2017
Recorded event now available

This CLE webinar will provide guidance to IP counsel on effective strategies before a trademark application is filed. The panel will discuss pre-filing considerations and offer best practices for overcoming pre-filing obstacles for trademark applications.


There are many factors that go into drafting a proposed trademark filing, including selecting the basis, anticipating blocking citations, adhering to settlement agreements, timing of product launches, and deadlines for filing proof of use.

Counsel face a myriad of key, complex decisions: Should the goods or services be described broadly or narrowly? Are multi-class applications strategically better than single-class applications? When should stylized word marks logos be filed rather than plain block letters? When should a claim to color be made? When submitting a specimen of use, is it better to show the use for one good per class or for all goods in each class?

IP counsel also face challenges in preparing applications to obtain the best protection, which is not necessarily the broadest protection. It is also important to bear in mind that all submissions are fully accessible worldwide and to consider issues of confidentiality.

Listen as our authoritative panel of trademark attorneys examines pre-filing strategies for trademark applications. The panel will discuss pre-filing considerations from identifying the proper owner, to the impact of licenses, to the timing of product launches. The panel will also offer best practices for overcoming anticipated obstacles to registration.


  1. Pre-filing considerations
    1. Types of searches
    2. Identifying the right owner/applicant
    3. Filing basis
    4. Goods and classes
  2. Pre-filing strategies
    1. The mark
    2. Specimens of use
    3. Anticipating blocking citations
    4. Anticipating other types of office actions
  3. Particular issues
    1. Correcting filing errors
    2. Trade dress
    3. Licensed users
    4. Timing of product launches
    5. Deadlines for filing proof of use
    6. Fraud
    7. Adhering to settlement agreements


The panel will review these and other key issues:

  • What type of search should be conducted before filing a trademark application?
  • What is the impact of having a license in place on a mark?
  • When should counsel show use for one good or class, and when is it best to show for all?


Cecilia R. Dickson, Director and Vice President
The Webb Law Firm, Pittsburgh

Ms. Dickson is an experienced trial lawyer with a particular focus on IP litigation relating to patent, trademark, copyright, covenants not to compete, and other IP issues. She has substantial experience in the areas of trademark litigation, counseling, portfolio management and registration; patent litigation relating to electrical engineering, optics, mechanics, cable industry, cellular telephone technology, and software; and e-discovery and document retention. Ms. Dickson is a past Chair of the Pennsylvania Bar Association’s IP Law Section.

Richard C. Gilmore, Registered Patent Attorney
Maschoff Brennan, Park City, Utah

Mr. Gilmore is involved in all aspects of IP law, with a focus on the preparation and prosecution of patent and trademark applications in the U.S. and foreign countries. He represents clients from a diverse range of industries, and often works directly with in-house counsel to develop and maintain their worldwide patent and trademark portfolios. His trademark practice includes a full range of services including searching, clearance, opinions, licensing and representing clients before the TTAB. Mr. Gilmore is a frequent speaker on patent and trademark matters.

Jonathan A. Hyman, Partner
Knobbe Martens Olson & Bear, Los Angeles

Mr. Hyman’s practice includes domestic and foreign trademark prosecution, enforcement and clearance, ex parte and inter partes proceedings before the TTAB, IP licensing, copyrights, rights of publicity, domain names and ICANN proceedings, entertainment law, and client counseling. He also frequently conducts in-house seminars to assist clients in managing and protecting trademark portfolios. Mr. Hyman currently represents clients in a wide range of industries and fields, including entertainment, sports, fashion and apparel, retail, technology, financial services, software, and e-commerce.


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Intellectual Property Law Advisory Board

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