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Tips and Best Practices for Responding to Trademark Office Actions

Level: Advanced
Runtime: 88 minutes
Recorded Date: June 16, 2020
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        • USPTO Rule Updates and Formalities
                - Mandatory Electronic Filing
                - New Specimen Requirements
                - U.S. Counsel Rule
                - Login Requirement
        • Likelihood of Confusion Refusals
                - The 2(d) refusal
                - In re E.I. duPont DeNemours & Co.
                - Overcoming 2(d) refusals
                - Argue in Response to 2(d) refusals
                - Other Options
                - Consent Agreements
        • Merely Descriptive Refusals
                - Lanham Act - Section 2(e)(1)
                - Preliminary Considerations
                - Options
                - Arguments
                - Supplemental Register
                - Acquired Distinctiveness - Section 2(f)
        • Summary

Runtime: 1 hour, 28 minutes
Recorded: June 16, 2020


Highlighted from Landslide's article, this webinar will cover how and when responding to Trademark decisions by the United States Trademark and Patent Office can greatly impact your chances of successful registration, as well as the scope of your client's eventual registration.

The panel will provide tips and best practices for successfully responding to common situations in which the Examining Attorney issues a refusal to register a trademark.

This program was recorded on June 16th, 2020.

Provided By

American Bar Association
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Kelu Sullivan

Kelly IP, LLP

For over a decade, Kelu Sullivan has helped clients select, register, and enforce their trademarks. Kelu represents her clients in all aspects of trademark and copyright law, including portfolio management, licensing, and litigation. Kelu is particularly experienced in the management of large international trademark portfolios and working with clients’ legal and business departments to achieve desired outcomes that are in sync with their business goals. Kelu represents clients in federal district and appellate courts, managing every aspect of litigation, from complaints, to discovery, to presentation of the case in front juries. She has also presented difficult trademark cases on appeal, and successfully overturned three lower tribunal decisions.

Prior to joining Kelly IP, Kelu was a partner at BakerHostetler in Washington, DC.

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Cynthia Moyer

Fredrikson & Byron, P.A.

Cindy actively partners with business clients, working to develop and protect their trademarks, copyrights and other rights.

She has extensive experience advising clients on issues pertaining to domestic and international trademark registration and enforcement, and routinely handles all aspects of managing trademark portfolios, including clearance, use, prosecution, maintenance and enforcement. Cindy also maintains close relationships with counsel around the world, allowing her to assist clients in their global expansion strategies and protection of their intellectual property worldwide.

On the enforcement side, Cindy regularly appears in the Trademark Trial and Appeal Board (TTAB) and federal courts around the country. She has been lead counsel in trademark and copyright infringement cases, contract disputes, unfair competition claims and construction arbitration cases. She has argued appeals in the United States Court of Appeals for the Sixth and Eighth Circuits, and appeared in federal courts in Arkansas, California, Iowa, Louisiana, Minnesota, Ohio, Pennsylvania, South Carolina, South Dakota, and Wisconsin.

Cindy has held a number of leadership positions in the firm, including previously serving as Chair of the firm’s Pro Bono Committee and the firm’s Associate Development Committee.

In addition to her practice, Cindy is active in the Twin Cities pro bono community. She has served on the Board for the Fund for Legal Aid, the Children’s Law Center Board and is past President of the Boards of Volunteer Lawyers Network and the Legal Aid Society of Minneapolis.

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Erik M. Pelton

Founder and Managing Attorney
Erik M. Pelton & Associates, PLLC

As the founder and managing attorney of Erik M. Pelton & Associates, PLLC, Erik Pelton is a recognized leader in the trademark law field. With more than 10 years of experience, he is well versed in all aspects of trademark registration as well as proceedings before the Trademark Trial and Appeal Board (TTAB) because he's worked the registration process from both sides.

Prior to starting the firm in 1999, Erik worked for two years as an examiner at the USPTO. In more than a decade of private practice, he has registered more than 1,500 U.S. trademarks for clients, represented dozens of parties in Trademark Trial and Appeal Board disputes, and practiced before the U.S. Court of Appeals for the Federal Circuit.

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