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Temporary Non-Use of Trademarks In The Age of COVID

Level: Advanced
Runtime: 91 minutes
Recorded Date: August 25, 2020
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Closed Caption


        • What is "Use in Commerce"?
        • Excusable Nonuse at the USPTO
                - Tips and Strategies for Non-Use Filings
                - Beyond the Renewal
                - CARES Act Relief
                - Temporary Non-Use Abroad?
        • Q & A

Runtime: 1 hour, 32 minutes
Recorded: August 25, 2020


At times, trademark owners must delay or discontinue use of their trademarks whether domestically or across multiple jurisdictions. This program addresses the legal implications of temporary non-use and how brand owners and their counsel may address them.

This program was recorded on August 25th, 2020.

Provided By

American Bar Association
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Eric Perrott

Gerben Law Firm, PLLC.

Eric Perrott is a trademark and copyright attorney with Gerben Perrott, PLLC. He has helped thousands of clients, from start-ups to multi-national corporations, register and protect their trademarks, including the filing of over 1,500 trademark applications with the USPTO, successfully overturning hundreds of Office Actions issued by USPTO examining attorneys, obtaining ex parte and inter partes rulings for his clients before the Trademark Trial and Appeal Board, and, most importantly, providing individualized client counseling catering to the client’s needs, industry and budget. Eric also uses his knowledge of new technology and online platforms to provide clients with advice online marketplace infringement on Amazon, eBay and Etsy and to counsel clients on how to protect their brands on social media and within domain names (including UDRP proceedings.)

Mr. Perrott is a skilled negotiator and represents clients in all manner of trademark and copyright enforcement and defense matters.

From being a featured speaker at the USPTO’s Global Intellectual Property Center, to being quoted by CNBC, BloombergBNA and more, Mr. Perrott regularly shares his knowledge of trademark law to organizations and news outlets, while regularly publishing articles for those looking to protect their valuable brands and intellectual property.

Eric is involved with ABA Leadership, as the Chair of the ABA Intellectual Property Division’s Committee on USPTO Operations Related to Trademarks, spear-heading the ABA’s official comments and responses to USPTO policies changes and helping to provide fellow practitioners with information and updates on USPTO prosecution, ex parte appeals, and inter partes proceedings.

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Tracy L. Deutmeyer

Fredrikson & Byron, P.A.

Tracy is a trademark and copyright attorney who works closely with clients on protecting and enhancing their intellectual assets around the globe.

Through her business-focused and comprehensive approach, Tracy counsels clients on building and protecting the value of their brands and products. She manages the complex global trademark portfolios for clients across a wide variety of industries and provides practical guidance for developing and implementing intellectual property protection strategies. Tracy advises clients on all areas of U.S. trademark and copyright law, including the availability, prosecution, maintenance, acquisition and enforcement of rights. She regularly represents parties before the Unites States Patent and Trademark Office Trademark Trial and Appeal Board.

Tracy is heavily involved in the American Bar Association’s Section of Intellectual Property Law. She currently serves as Vice-Chair of the USPTO Operations Relating to Trademarks Committee; as a member of the Section’s CLE Board and again chairs the committee charged with organizing this year’s ABA-IPL Trademark Day at the USPTO. Prior to joining Fredrikson, Tracy practiced trademark law for more than 15 years.

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Matthew Asbell

Offit Kurman, P.A.

Matthew Asbell assists clients in clearing, obtaining, enforcing, and defending trademark rights in the United States and throughout the world. He also provides advice on patents, copyrights, domain names, and other related areas. With prior background in the entertainment industry, information technology, and medicine, he is comfortable working with a wide range of clients in diverse industries. In addition, his certifications as a Social Media Strategist and software Master Instructor equip him to handle complex intellectual property matters arising in the Web 2.0 space.

Matthew frequently collaborates on and authors articles on intellectual property on subjects ranging from social media and domain names to licensing, branding, and information technology. He is an active speaker and lecturer and is a frequent moderator and panelist at ABA, INTA, and other conferences. He has been an adjunct professor of law at Fordham University, The Benjamin N. Cardozo School of Law, and Columbia University. Matthew co-produced a series of 5 informational videos for the American Bar Association that illustrate intellectual property rights in different settings.

Matthew received his B.S. in Psychology with a minor in Music Composition from Carnegie Mellon University and attended the Medical College of Pennsylvania, (now part of Drexel University). He received his J.D. from the Benjamin N. Cardozo School of Law, where he was president of the Intellectual Property Law Society and Acquisitions Editor of the top-ranked Cardozo Arts and Entertainment Law Journal. As an active alumnus, he serves on the Alumni Executive Committee, chairs the Alumni Intellectual Property Practice Group, and mentors numerous young attorneys and law students.

Prior to becoming a lawyer, he managed emerging singer-songwriters and recording artists, trained corporate employees of a pharmaceutical company to use software applications, and studied medicine. Matthew’s passion for his work in intellectual property arises from a deep appreciation for creativity, whether in the form of invention, design, expression, or marketing. He regularly applies his love of technology, language, and culture.

Outside of work, Matthew, a native of Philadelphia, enjoys spending time with his wife, a Brazilian staff member of the United Nations, and their twin children. His interests range from music (including songwriting, piano, guitar, and percussion), cooking, SCUBA diving, and martial arts.

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