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

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


Conducted on Tuesday, July 11, 2017
Recorded event now available


This CLE webinar 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.

Description

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.

Outline

  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

Benefits

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?

Faculty

Laurie B. Marshall, Founder
Marshall Law Group, New York

As a trademark attorney with close to 20 years of experience, Ms. Marshall assists businesses and entrepreneurs with the legal aspects of branding their company. She is a former in-house Trademark Counsel for Major League Baseball and continues to represent many MLB clubs as well as the National Basketball Association. Ms. Marshall handles a broad range of trademark matters, including worldwide trademark prosecution and trademark clearance and enforcement. She also negotiates and drafts settlement agreements and deals extensively with opposition matters. Ms. Marshall speaks regularly across the country about the importance of trademarks and brand protection.  

Carl J. Spagnuolo, Partner
McHale & Slavin, Palm Beach Gardens, Fla.

Mr. Spagnuolo specializes in trademark, copyright and entertainment law. He manages the firm’s trademark practice and is highly experienced in all aspects of branding, including the clearance and prosecution of trademarks and advertising slogans, counseling regarding proper use of marks, and brand protection and enforcement strategies. At present Mr. Spagnuolo is listed as “attorney-of-record” on over 2,700 trademark files at the United States Trademark Office and also serves as domestic attorney-of-record on several thousand international registrations in over 86 countries throughout the world.

Brian M. Taillon, Intellectual Property Attorney
McHale & Slavin, Palm Beach Gardens, Fla.

Mr. Taillon’s practice focuses on IP-related transactions, copyright and trademark prosecution, and IP litigation in federal courts. He is experienced in trademark opposition and cancellation proceedings before the TTAB, as well as internet domain dispute proceedings before the National Arbitration Forum. Mr. Taillon also has experience in prosecuting applications for the registration of U.S. trademarks, including searches, opinions and responding to office actions.


Recordings

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Program Materials

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Program Materials

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Intellectual Property Law Advisory Board

Stephen R. Baird

Shareholder

Winthrop & Weinstine

Charles S. Baker

Partner

Locke Lord

David S. Bloch

Partner

Winston & Strawn

Ian N. Feinberg

Partner

Feinberg Day Alberti & Thompson

Bassam N. Ibrahim

Shareholder

Buchanan Ingersoll & Rooney

Mark P. Wine

Partner

Orrick

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