Trademark Incapability, Merely Informational, and Failure to Function Refusals: Strategies for Avoiding and Overcoming Trademark Office Actions
Assessing Response Alternatives and Persuading the Examiner
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel on strategies for assessing, avoiding, and overcoming trademark incapability, failure to function, and merely informational trademark registration refusals from the USPTO.
- Informational refusals: categories, trends
- Matter merely conveys general information or is highly laudatory
- Widely used or common messages
- Religious matter
- Strategies for avoiding refusals
- Best practices for responding to and overcoming refusals
The panel will review these and other critical issues:
- How can trademark counsel position an application to avoid the USPTO issuing failure to function and merely informational refusals?
- What are the primary considerations for trademark counsel when responding to merely informational and failure to function office actions?
- What are the areas that have proven to be red flags for the USPTO?
- What strategies should trademark counsel implement to increase the likelihood of mark registration after the office action is issued?
Stephen R. Baird
Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on... | Read More
Mr. Baird works with clients to address their most difficult trademark problems. He provides strategic guidance on trademark usage and clearance, branding strategies, domestic and worldwide portfolio management, litigation and enforcement, internet domain name and trademark disputes, licensing, and prosecution. His trademark and brand protection work has gained notoriety for the protection and registration of nontraditional trademarks, product configuration trademarks, and trade dress and product packaging trademarks.Close
Tucker A. Chambers
Mr. Chambers works with clients on a variety of intellectual property matters, focusing on trademark issues. He handles... | Read More
Mr. Chambers works with clients on a variety of intellectual property matters, focusing on trademark issues. He handles trademark clearance, prosecution, eCommerce enforcement, litigation, and appeals, and counsels clients regarding brand management and IP enforcement matters. He has deep experience litigating proceedings before the Trademark Trial and Appeal Board (TTAB), in addition to trademark and copyright infringement litigation in federal court. He also has experience litigating domain name disputes and managing online IP enforcement programs on eCommerce platforms.Close
Alexandra A. Holt
Ms. Holt focuses her practice on the clearance, maintenance, and enforcement of intellectual property rights, including... | Read More
Ms. Holt focuses her practice on the clearance, maintenance, and enforcement of intellectual property rights, including trademarks, copyrights, and rights of publicity. She has experience evaluating the strength, availability, and enforceability of new brand names, registering copyrights, recovering infringing domain names from cybersquatters, and helping clients to implement domain name enforcement strategies, recovering over 200 infringing domain names on behalf of Greenberg Traurig’s clients to date. She also enforces clients’ intellectual property rights on social media and on user-generated content sites.Close