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Evidentiary Issues at the TTAB: Examination Guides, Generic.com Marks, Third-Party Registrations, Consumer Surveys

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

This program is included with the Strafford CLE Pass. Click for more information.
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Conducted on Tuesday, September 10, 2024

Recorded event now available

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This CLE course will guide trademark counsel on evidentiary issues at the Trademark Trial and Appeal Board (TTAB). The panel will discuss the Examination Guides, particularly as they address generic marks, evidentiary issues related to third-party registrations, and consumer surveys. The panel will discuss the scope and timing of discovery. The panel will also examine recent court treatment and offer best practices for navigating evidentiary issues at the TTAB.

Description

The USPTO Trademark Manual of Examining Procedure includes three Examination Guides that provide insights on the USPTO's approach to various evidentiary issues. Among other topics, that guidance addresses the issue of so-called generic.com marks and how trademark applicants can establish acquired distinctiveness, including through the use of consumer surveys.

Listen as our authoritative panel of IP attorneys examines evidentiary issues associated with the prosecution of applications and with ex parte and inter partes litigation before the TTAB. The panel will discuss the new Examination Guides, particularly as they address claimed generic.com marks, evidentiary issues related to third-party registrations, and consumer surveys. It also will address the scope and timing of discovery and potential issues associated with:

  • the proper role of notices of reliance;
  • cross-examination of witnesses testifying by declaration;
  • the admissibility and significance of Wayback Machine search results; and
  • the introduction of website captures.

Takeaways will include the best practices counsel should employ when submitting or challenging evidence and testimony, as well as lessons learned from recent case law.

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Outline

  1. Examination Guides
    1. Generic.com marks
    2. Consumer surveys
    3. Third-party registrations
  2. Discovery
    1. Scope
    2. Timing
  3. Recent decisions
  4. Best practices

Benefits

The panel will review these and other priority issues:

  • What guidance do the Examination Guides provide for generic.com marks?
  • What lessons can trademark counsel draw from recent decisions when assessing evidence?
  • What best practices should counsel employ when submitting or challenging evidence?

Faculty

Davis, Theodore
Theodore H. Davis, Jr.
Partner
Kilpatrick Townsend & Stockton

Mr. Davis's practice focuses on domestic and international litigation and client counseling in the fields of...  |  Read More

Hastings, James
James R. Hastings
Of Counsel
Rothwell Figg Ernst & Manbeck

Mr. Hastings has more than 20 years of experience representing corporate and entrepreneurial brand owners in all facets...  |  Read More

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