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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 premium CLE video webinar with Q&A

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Conducted on Tuesday, November 21, 2023

Recorded event now available

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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.


Many factors go into drafting a proposed trademark application, 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 or 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.



  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?


Lesser, Jacqueline
Jacqueline M. Lesser

Ice Miller

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

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 and Chair of the Intellectual Property Practice Group
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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