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Registering Trademarks: Overcoming Descriptive, Geographic, and Surname Refusals

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, December 19, 2023

Recorded event now available

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This CLE course will guide IP counsel on avoiding or overcoming potential roadblocks to trademark registration under Section 2(e) of the Lanham Act. The panel will discuss the descriptive, geographic, and surname requirements and offer best practices for overcoming descriptive, geographic, and surname refusals.

Description

Section 2(e) of the Lanham Act provides several potential obstacles to trademark registration. Whether a registration is refused because it is merely descriptive or misdescriptive, geographic, or a surname, trademark counsel must prepare for these potential hurdles when drafting the mark application or overcoming such refusals.

A showing of secondary meaning, public perception of a mark, or proving acquired distinctiveness can be the pathway to successful registration. However, there are many factors to consider when deciding the best way to respond to a refusal.

Listen as our authoritative panel examines the potential roadblocks to trademark registration under Section 2(e) of the Lanham Act. The panel will discuss the descriptive, geographic, and surname requirements and provide guidance on strategies for overcoming descriptive, geographic, and surname refusals.

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Outline

  1. Descriptive, geographic, and surname requirements
  2. Lanham Act Section 2(e) potential roadblocks
  3. Overcoming descriptive, geographic, and surname refusals

Benefits

The panel will review these and other key issues:

  • What are some of the common errors that prevent a successful trademark registration?
  • What are the critical considerations for trademark counsel when responding to a refusal?
  • What other strategies should counsel implement to increase the likelihood of mark registration after a refusal?

Faculty

Gallagher, Patrick
Patrick J. Gallagher

Partner
Barnes & Thornburg

Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and...  |  Read More

Weseman, Draeke
Draeke H. Weseman

Of Counsel
Greenberg Traurig

Mr. Weseman helps brands by applying his knowledge of trademark law, enhanced by years of experience, to complex...  |  Read More

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