Registering Trademarks: Overcoming Genericness Refusals, New Trademark Examination Evidentiary Standard for Genericness
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE course will guide trademark counsel on the new Examination Guide on genericness. The panel will discuss how examining attorneys at the USPTO and panels at the TTAB decide the issue of genericism as it relates to trademark applications. The panel will outline approaches that work and don't work for avoiding or overcoming refusals and responding to genericness rejections.
Outline
- The factors for determining genericness
- New USPTO examination guidance
- Best practices for avoiding a genericism refusal
- Strategies for overcoming refusals
- Examples from recent TTAB decisions
Benefits
The panel will review these and other relevant issues:
- What does the new Examination Guide mean for trademark applicants?
- How are the USPTO examining attorneys and the Board treating evidence of genericness?
- What best practices should counsel employ to avoid or overcome genericness refusals?
Faculty
Jeffrey P. Dunning
Shareholder
Greenberg Traurig
Mr. Dunning focuses his practice on advising clients regarding the management of their trademark portfolios, including... | Read More
Mr. Dunning focuses his practice on advising clients regarding the management of their trademark portfolios, including trademark clearance, registration, maintenance, protection, enforcement, licensing and litigation. He has managed a number of large international trademark portfolios on behalf of major multinational companies in the retail, industrial and food/beverage sectors. For clients needing assistance with patent, unfair competition, domain name and copyright matters, Mr. Dunning’s experience extends to providing opinions, prosecution, licensing, litigation and enforcement. In addition, he has deep experience in handling intellectual property litigation, including managing extensive discovery proceedings, obtaining dismissals and summary judgments, and representing clients in numerous evidentiary hearings and jury trials in trademark and patent litigation in federal courts throughout the United States.
Close
Patrick J. Gallagher
Partner
Barnes & Thornburg
Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and... | Read More
Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and management of domestic and international trademark portfolios. He also has significant experience assisting clients with trademark enforcement, opposition and cancellation proceedings; brand protection programs; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings (UDRPs); and trademark licensing. He provides tailored advice for handling IP issues involving social media; IP due diligence and IP licensing; copyright counseling, registration, protection and litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.
Close
Molly R. Littman-Johnson
Attorney
Greenberg Traurig
Ms. Littman-Johnson focuses her practice on intellectual property litigation and enforcement. She has significant... | Read More
Ms. Littman-Johnson focuses her practice on intellectual property litigation and enforcement. She has significant experience representing clients in federal courts throughout the United States and before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office. Ms. Littman-Johnson's experience also includes representing clients in Uniform Domain Name Dispute Resolution (UDRP) proceedings, and protecting and enforcing clients’ intellectual property rights online and on social media. In addition to her intellectual property litigation practice, she advises on brand management and protection in the United States and globally, and on copyright development and registration.
Close