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Trademark Examiner Teleconferences and Communications Strategies: Preparing for and Conducting Examiner Communications to Advance Trademark Prosecution

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

This program is included with the Strafford CLE Pass. Click for more information.
This program is included with the Strafford All-Access Pass. Click for more information.

Conducted on Tuesday, July 11, 2017

Recorded event now available

or call 1-800-926-7926

This CLE course will provide guidance to trademark counsel on leveraging teleconferences and communications with United States Trademark Office (USPTO) trademark examiners to prosecute trademarks more efficiently and overcome specific obstacles. The panel will provide insight into conducting the communications and offer strategies for interacting with trademark examiners.


When responding to a trademark office action, counsel should consider whether and how to communicate with the trademark examiner. Directly communicating with the trademark examiner handling the application is one of the most efficient ways to advance the application. Having a dialogue reduces the back-and-forth between the examiner and trademark counsel.

Counsel should be prepared, having reviewed the case, knowing the supporting case law and TMEP statements, and ready to state its argument with multiple fall back positions. Communications also provide an opportunity to evaluate the examiner’s position in an office action.

While directly communicating with the trademark examiner can advance the prosecution of the trademark application, it can be a disaster if trademark counsel is not prepared or makes damaging admissions.

Listen as our authoritative panel of trademark attorneys offers guidance for trademark examiner communications to advance trademark prosecution. The panel will provide insights to work within the system, including strategies for preparing for and interacting with examiners.



  1. Understanding an office action
  2. Communicating with the examiner prior to responding to an office action
  3. Pitfalls when discussing an office action: best practices


The panel will review these and other key issues:

  • What should be included in a communication agenda and what should be avoided?
  • How can trademark counsel use examiner communications to the client’s advantage?
  • How and when should trademark counsel interact with examiners for effective and efficient prosecution?


Laurie B. Marshall
Laurie B. Marshall

Marshall Law Group

As a trademark attorney with close to 20 years of experience, Ms. Marshall assists businesses and entrepreneurs...  |  Read More

Carl J. Spagnuolo
Carl J. Spagnuolo

McHale & Slavin

Mr. Spagnuolo specializes in trademark, copyright and entertainment law. He manages the firm’s trademark...  |  Read More

Brian M. Taillon
Brian M. Taillon

Intellectual Property Attorney
McHale & Slavin

Mr. Taillon’s practice focuses on IP-related transactions, copyright and trademark prosecution, and IP litigation...  |  Read More

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