Trademark Registration: Overcoming Failure-to-Function Refusals, Meeting Use and Distinctiveness Requirements
Recording of a 90-minute premium CLE webinar with Q&A
This CLE course will guide IP counsel on avoiding or overcoming potential roadblocks to trademark registration for failure to function under the Lanham Act. The panel will discuss the use and distinctiveness requirements and how the USPTO and courts have treated the issue. The panel will also provide best practices for overcoming failure-to-function refusals.
- Failure to function
- Connection to distinctiveness
- USPTO and court treatment
- Best practice to avoid a failure-to-function refusal
- Overcoming a failure-to-function rejection
The panel will review these and other key issues:
- What are the critical considerations for trademark counsel when responding to a refusal?
- What steps can counsel take to avoid having a trademark application rejected by the USPTO because it is does not function as a mark?
- What strategies should counsel implement to increase the likelihood of mark registration after a refusal?
Joseph R. Englander
Fowler White Burnett
Mr. Englander handles a broad range of intellectual property matters, including the prosecution of U.S. and... | Read More
Mr. Englander handles a broad range of intellectual property matters, including the prosecution of U.S. and international patents, trademarks and copyrights, the negotiation and enforcement of IP transactions and licensing agreements, and the representation of corporations and individuals in IP disputes and related corporate matters. He is experienced in trials before the TTAB and the PTAB. Mr. Englander's extensive IP experience has allowed him to conduct IP seminars and advise art fair and museum clients regarding international copyright and trademark issues. In addition, Mr. Englander handles FDA, food and beverage and custom law issues for his clients, as well as manages domain name arbitrations and performs due diligence for acquisitions of corporations and IP portfolios.Close
Professor Alexandra J. Roberts
UNH Franklin Pierce School of Law
Prof. Roberts teaches and writes in the areas of trademark and false advertising law, entertainment law, contracts, and... | Read More
Prof. Roberts teaches and writes in the areas of trademark and false advertising law, entertainment law, contracts, and law and literature. Her current scholarship focuses on trademark use and distinctiveness generally and how trademarks function on social media in particular. Prof. Roberts previously served as the Executive Director of the Franklin Pierce Center for Intellectual Property at UNH Law and as a Visiting Assistant Professor at Boston University School of Law. Prior to entering academia, she was an associate in the IP litigation group at Ropes & Gray, first in its New York and then in its Boston office. Prof. Roberts is co-chair of the Junior Intellectual Property Scholars Association (JIPSA) and an Affiliated Fellow of the Yale information Society project.Close