Trademark Registration and Use in Commerce: Things You Need to Know Recording

Registering trademarks or brands has been quite a challenge for every trademark owner. When applying to register for a trademark at the federal level, the Lanham Act first requires that the mark be used in commerce regulated by Congress. Traditionally, the United States Patent and Trademark Office (…

Trademark Registration and Use in Commerce: Things You Need to Know

Wednesday, March 22, 2017

3:00 pm – 5:00 pm (EST)

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Birch, Stewart, Kolasch & Birch, LLP

Goldman, Sloan, Nash and Haber LLP

Parsons Behle & Latimer

Birch, Stewart, Kolasch & Birch, LLP

Birch, Stewart, Kolasch and Birch, LLP (BSKB) is a full service intellectual property law firm, offering services in the areas of patent prosecution, post-grant review, litigation, ITC litigation, opinions and counseling, design patents, trademarks and licensing. Our knowledgeable attorneys and agents hold advanced degrees and are experienced in the fields of chemistry, electronics and IT, mechanical engineering and life sciences/biotechnology.

We believe in offering every client quality, personalized service, and are committed to educating our clients to help them make the most of their intellectual property. BSKB has a rich tradition of offering seminars on intellectual property law that have been attended by practitioners from around the world.

Website: http://www.bskb.com/

Goldman, Sloan, Nash and Haber LLP

For more than 35 years, Goldman Sloan Nash & Haber (GSNH) LLP has helped leading businesses, entrepreneurs and individuals successfully navigate the maze of corporate & commercial law to help protect and grow their businesses. Our mid-sized law firm is based in downtown Toronto, Ontario, Canada and provides advice across all major practice areas including Intellectual Property. As a mid-sized law firm, we are committed to providing the personalized service of a boutique law firm with the sophistication of a larger law firm.

Website: http://www.gsnh.com/

Parsons Behle & Latimer

Parsons Behle & Latimer offers national expertise in a regional law firm. In addition to being the largest Utah-based law firm, Parsons Behle & Latimer is one of the oldest and best known firms in the Intermountain Region, offering litigation and business law services since 1882. The firm offers the resources and capabilities of a large and diverse firm, coupled with the highest levels of accessibility and responsiveness. With more than 135 attorneys, it brings a depth and range of experience in the following major areas: Banking & Finance; Bankruptcy & Restructuring; Corporate Transactions & Securities; Energy; Environmental & Natural Resources; Employment & Labor; Government Relations & Lobbying; Health Care; Intellectual Property; Litigation; Real Estate; and Tax law. Headquartered in Salt Lake City, Parsons Behle & Latimer has offices in Boise, Las Vegas, Phoenix, Reno and Washington, DC.  www.parsonsbehle.com

Website: http://www.parsonsbehle.com/

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Robert Kenney
Robert Kenney
Partner
Birch, Stewart, Kolasch & Birch, LLP

Robert Kenney has over 30 years of experience in patent, trademark and copyright litigation, as well as trademark prosecution, counseling and portfolio management. Mr. Kenney helps clients protect, profit from and enforce their valuable intellectual property rights, including licensing and intellectual property asset acquisition, creating and protect trademarks, building brands and making trademarks and brands profitable.

A seasoned litigator, Mr. Kenney has represented numerous clients in United States District Courts, U.S. Appeals Courts, the International Trade Commission and before the U.S. Patent and Trademark Office. His extensive experience allows for efficiency in his practice and a universal focus on clients’ business interests first, helping his clients avoid litigation where possible, and tailoring litigation strategy toward the best business outcomes for clients.

Mr. Kenney is also skilled in all aspects of trademark practice, including trademark clearance, prosecution, portfolio management, client counseling, anti-counterfeiting counseling and inter partes matters.

He is an experienced educator in intellectual property litigation and trademark law for audiences at all levels, and coordinates BSKB's annual U.S. Trademark Practice Seminar with participants from around the globe. Mr. Kenney lectures extensively throughout the world on U.S. trademark practice as well as intellectual property litigation and dispute resolution in United States courts and the International Trade Commission. He finds that teaching in relation to new developments in intellectual property litigation and trademark law has contributed to successes in his legal practice. Mr. Kenney’s clients include the full spectrum from multinational and Global 500 companies to mid-size businesses and individuals in the fields of consumer electronics, pharmaceuticals, chemicals, apparel, home goods and kitchen products, travel services and automotive parts.

John McKeown
John McKeown
Counsel
Goldman, Sloan, Nash and Haber LLP

John focuses on providing advocacy and advice concerning intellectual property and related matters, including protecting trademarks, copyrights, patents, confidential information and misleading advertising claims under the Competition Act. He is certified by the Law Society of Upper Canada as a specialist in Intellectual Property Law (TradeMarks/Copyright).  He is currently the Chair of the Canadian Bar Association Trademarks Committee.

John is recognized as a leading trademark practitioner in Canada and globally inBest Lawyers in Canada and World Trademark Review.

John is the author of two textbooks dealing with trademarks, Brand Management in Canadian Law (Carswell currently in the 4th Edition) and Canadian Intellectual Property Law and Strategy: Trademarks, Copyright and Industrial Designs. (LexisNexis, published annually).

John is also the author of Fox, Canadian Law of Copyright and Industrial Designs (3rd Edition, 2000; 4th Edition, 2003), the leading copyright textbook in Canada.  The 4th edition has been released in a loose leaf format.  John and the text have been referred to by both the Supreme Court of Canada and the Federal Court of Appeal as an authoritative source.

Kennedy Luvai
Kennedy Luvai
Shareholder
Parsons Behle & Latimer

Mr. Luvai is a registered patent attorney with an undergraduate degree in computer science. His practice concentrates on intellectual property litigation involving copyrights, trademark and trade dress, patents, trade secrets, and right of publicity. He also advises clients on a broad range of strategic legal and business matters related to intellectual property and related issues. He is licensed to practice in the states of Idaho, Utah, Oregon and Washington.  Mr. Luvai is a past chair of the Intellectual Property Section of the National Bar Association for the 2014-2015 bar year, and is an adjunct professor at the Concordia University School of Law where he teaches intellectual property courses.  He has been recognized as a “Rising Star” in Intellectual Property Litigation by the Mountain States Super Lawyers in 2014 and again in 2015.

Key Topics

Registering trademarks or brands has been quite a challenge for every trademark owner. When applying to register for a trademark at the federal level, the Lanham Act first requires that the mark be used in commerce regulated by Congress. Traditionally, the United States Patent and Trademark Office (USPTO) interprets “use in commerce” as purely intrastate use of trademark wherein a branded product is shipped to a customer in-state. However, such process is considered insufficient to support a federal trademark registration since it cannot be regulated by Congress.

In a recent case, Christian Faith Fellowship Church v. Adidas AG, the Court of Appeals for the Federal Circuit (“CAFC”) released a decision suggesting that almost any genuine use of a mark in more than one state is “use in commerce”.

The Canadian Trade-marks Act has been amended to remove the requirement to use a trademark prior to obtaining a registration.  However, the amendments have not yet been brought into force and will not likely be implemented until 2019.  Many interested parties have asked that the change relating to use not be made.

In this LIVE Webcast a panel of thought leaders and professionals assembled by The Knowledge Group will help the audience understand all the important issues surrounding Trademark Registration and Use in Commerce. Speakers will highlight the importance of “use in commerce” when registering trademarks.

Key topics include:

  • Use in Commerce – Primer
  • Trademark Registration Framework
  • The Christian Faith Fellowship Church v. Adidas AG Case
  • The Lanham Act
  • Trademark Use: Definitive Guide
  • Canadian Trademark Amendments Relevant to Trademark Use

Who Should Attend
  • Trademark Lawyers and Professionals
  • Brand Owners
  • Counsel
  • Trade Practicing Lawyers
  • Marketing and Advertising Professionals

Credit Info
Course Level: Intermediate
Prerequisite: NONE
Method Of Presentation: Group-Internet Based
Credits: 2.0
Course Code: 146373
NASBA Field of Study: Management Services – Technical
NY Category of CLE Credit: Skills

Registering trademarks or brands has been quite a challenge for every trademark owner. When applying to register for a trademark at the federal level, the Lanham Act first requires that the mark be used in commerce regulated by Congress. Traditionally, the United States Patent and Trademark Office (USPTO) interprets “use in commerce” as purely intrastate use of trademark wherein a branded product is shipped to a customer in-state. However, such process is considered insufficient to support a federal trademark registration since it cannot be regulated by Congress.

In a recent case, Christian Faith Fellowship Church v. Adidas AG, the Court of Appeals for the Federal Circuit (“CAFC”) released a decision suggesting that almost any genuine use of a mark in more than one state is “use in commerce”.

The Canadian Trade-marks Act has been amended to remove the requirement to use a trademark prior to obtaining a registration.  However, the amendments have not yet been brought into force and will not likely be implemented until 2019.  Many interested parties have asked that the change relating to use not be made.

In this LIVE Webcast a panel of thought leaders and professionals assembled by The Knowledge Group will help the audience understand all the important issues surrounding Trademark Registration and Use in Commerce. Speakers will highlight the importance of “use in commerce” when registering trademarks.

Key topics include:

  • Use in Commerce – Primer
  • Trademark Registration Framework
  • The Christian Faith Fellowship Church v. Adidas AG Case
  • The Lanham Act
  • Trademark Use: Definitive Guide
  • Canadian Trademark Amendments Relevant to Trademark Use

SEGMENT 1:
Robert Kenney, Partner
Birch, Stewart, Kolasch & Birch, LLP

  • Primer on Lanham Act’s “Use in Commerce” Provision
    • Statutory Intent
    • Prior Interpretations
  • “Single Use” Standard Adopted in Christian Faith Fellowship Church v. Adidas AG 

SEGMENT 2:
Kennedy Luvai, Shareholder
Parsons Behle & Latimer

  • U.S. Trademark Registration Process
    • Requirements for Trademark
    • Pre-application considerations
    • Application Submission and Monitoring
    • USPTO Review
    • Use vs. Intent to Use
    • Publication and Registration
  • Cases Interpreting Statutory Provisions

SEGMENT 3:
John McKeown, Counsel
Goldman, Sloan, Nash and Haber LLP

  • Canadian Trade-marks Act and 2014 Amendments
  • Bases for Registration:
    • Use
    • Intent to Use
    • Foreign Use and Registration
  • Canadian Standard: Does Single Sale Suffice?
  • Comparison to EU “Genuine Use in the Community” Test

This is a must attend event for anyone interested in understanding the significant issues relating to Trademark Registration and Use in Commerce.

During this LIVE Webcast, you will hear:

  • Detailed guidance explained by the most qualified key leaders & practitioners.
  • Hear directly from key thought leaders
  • Interact directly with panel during Q&A

Register now and avail of the early bird discount. Space is limited. Please click the registration button below to enroll in this course today.

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