Trademark Protection for Common Words and Phrases: Limitations, Conducting Searches, Grounds for Refusal
Recording of a 90-minute premium CLE video webinar with Q&A
This CLE webinar will guide IP counsel on the trademark prosecution of common words or phrases. The panel will discuss the refusals common words or phrases may run into at the U.S. Patent and Trademark Office (USPTO) and examine recent TTAB decisions involving such words or phrases. The panel will discuss how practitioners should handle searches for and clearance of marks involving common words and phrases and offer best practices for prosecuting a trademark application for these words and phrases.
Outline
- Trademarking common words and phrases
- Requirements
- Challenges
- Refusals
- Recent TTAB and court decisions
- Clearance searches
- Best practices for trademarking common words
Benefits
The panel will review these and other relevant issues:
- What types of refusal has the TTAB used to deny registration of common words or phrases?
- What best practices should counsel employ to register a trademark for a common word or phrase?
Faculty
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.
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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.
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Mayura I. Noordyke
Trademark Counsel, Global IP
Medtronic
Ms. Noordyke is an intellectual property attorney and serves as Trademark Counsel, Global IP at Medtronic. She... | Read More
Ms. Noordyke is an intellectual property attorney and serves as Trademark Counsel, Global IP at Medtronic. She provides counsel to the company on all issues related to trademark and copyright law. Ms. Noordyke was previously in private practice, focusing on trademark clearance, investigation, prosecution, licensing, branding, social media, cybersquatting, internet domain name disputes, copyright matters, and advertising and promotions.
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