Trademark Application Pre-Filing Strategies: Overcoming the Obstacles

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

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


Tuesday, September 28, 2021 (in 5 days)

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

or call 1-800-926-7926

This CLE course will guide 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.

Description

Many factors go into drafting a proposed trademark filing, including selecting the basis, anticipating blocking citations, adhering to settlement agreements, the 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 wordmarks 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 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 as well as consider confidentiality issues.

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.

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Outline

  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

Benefits

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?

Faculty

Lesser, Jacqueline
Jacqueline M. Lesser

Counsel
BakerHostetler

Ms. Lesser has represented trademark and copyright clients for more than 25 years, protecting and defending clients in...  |  Read More

Pheiffer, Rory
Rory P. Pheiffer

Partner
Barnes & Thornburg

Mr. Pheiffer’s practice covers a broad spectrum of intellectual property issues, including domestic and...  |  Read More

Winston, Laura
Laura J. Winston

Principal
Offit Kurman

Ms. Winston focuses her law practice primarily in the areas of trademarks, copyrights, and the internet, representing a...  |  Read More

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You may pre-order a recording to listen at your convenience. Recordings are available 48 hours after the webinar. Strafford will process CLE credit for one person on each recording. All formats include course handouts.

To find out which recorded format will provide the best CLE option, select your state:

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