Preparation and Prosecution of Trademark Applications: A Comprehensive Guide
Securing a trademark is every business’ top priority as it serves both as an asset and an identity. Moreover, registering marks is becoming increasingly necessary to enforce a business’ trademark rights on the internet where infringement and counterfeiting is a growing concern. However, many companies struggle with registering their marks since trademark registration requires a comprehensive and an accurate application that demonstrates how the mark is distinctive, unique in its field and serves to identify and distinguish the company’s goods/services from that of its competitors and other businesses. Each trademark or service mark application will undergo a rigorous examination by one of several hundred examining attorneys at the U.S. Patent and Trademark Office (USPTO) and is therefore more than a “rubber stamping.” Failure to prepare the necessary requirements for an application can lead to the denial of registration and the loss of all filing fees.
Join a panel of key thought leaders and trademark lawyers assembled by The Knowledge Group as they bring the audience to a road beyond the basics of the preparation and prosecution of trademark application. Speakers will also provide the audience with best practices and risk mitigation strategies for an effective trademark registration.
Key topics include:
- Trademark Selection and Preparation: An Overview
- Trademark Registration Rejections
- Ensuring an Effective Trademark Preparation and Prosecution
- Risk Mitigation Strategies and Best Practices
- What Lies Ahead?
Alexander H. Butterman, Senior Counsel
Dunlap Bennett & Ludwig PLLC
- What does “use in commerce” mean?
- Why are “dates of first use” important?
- What are differences between a words-only and a logo application?
- What are differences between an actual use and intent-to-use application?
- What is the difference between a “drawing” and a “specimen”?
- What is a trademark?
- How is a “trademark" different from a "trade name"?
- What is “goodwill” and how does it relate to trademarks?
Barnard Madsen, Partner
Fillmore Spencer LLC
- Why register? What are 5 benefits of federal registration? What are 5 functions of trademarks?
- Why should I have a comprehensive search done before filing a trademark application?
- What does “distinctiveness” mean and what does it have to do with trademarks?
- What are 5 types of marks along the distinctiveness continuum?
- What does “acquired distinctiveness” mean?
- What are 8 factors in choosing a trademark?
- What are the 8 steps in completing a trademark application?
- What are the filing fees for an application?
- What can go wrong with an application? Possible Examining Attorney Office Action:
- Mark is merely descriptive
- Likelihood of confusion with a registered mark or prior-applied-for mark
- Need a disclaimer for merely descriptive or generic portions of mark
- Need to amend identification of goods or services
- Or, someone opposes your application
- How long does it generally take to obtain trademark registration?
- How long does a trademark registration last?
Mary Witzel, Senior Associate
Dunlap Bennett & Ludwig PLLC
- Prosecution as it relates to trademark litigation
- Errors or inaccuracies to watch for in filing, from a litigation perspective
- The opposition phase of a trademark application
- Effect of registration on trademark litigation
Who Should Attend:
- Trademark Lawyers
- Brand Owners
- Brand Managers
- In-house Counsel
- Corporate Counsel
- IP Attorneys & Consultants
- Other Related/Interested Professionals
Alex Butterman has been representing a diverse group of foreign and domestic businesses in a variety of industries and commercial sectors since 1995 in all facets of trademark prosecution and practice before the U.S. Patent and Trademark Office (USPTO) and virtually every trademark office around the world with the help of an extensive network of foreign associates. Alex has worked in several intellectual property boutique law firms and consulted with the in-house trademark group of a multi-national hospitality industry company. Alex counsels businesses at all stages of development, assessing and searching the availability of marks; establishing, enforcing and maintaining trademark and service mark rights; resolving intellectual property disputes; handling internet domain name IP issues, anti-counterfeiting matters, copyright prosecution, IP licensing and transactional matters, and intellectual property research and due diligence investigations.
As an Attorney Advisor in Law Office 106 of the USPTO trademark examining operations for three years, Alex examined thousands of trademark applications in the fields of cosmetics, toiletries and cleaning preparations, publications and office supplies, toys and sporting goods, and all types of service mark applications and defended registration refusals before the Trademark Trial and Appeal Board.
Alex has been an active member of the International Trademark Association, participating in several of its committees for the past dozen years.
Alex Butterman has been representing a diverse group of foreign and domestic businesses in a variety of industries and commercial …
Mary Witzel is an associate attorney at Dunlap Bennett & Ludwig PLLC. She specializes in litigation and intellectual property law. She is licensed to practice in Virginia.
Mary attended the George Washington University Law School, where she served as executive articles editor on the student editorial board of the American Intellectual Property Law Association Quarterly Journal, wrote a note on trade secrets, was awarded Best Overall Competitor in the Judge Albert H. Grenadier International Law Moot Court Competition, and was a member of the GW Law Moot Court Board. Prior to joining the firm, Mary worked for a boutique Richmond law firm that specialized in trademark law.
Mary Witzel is an associate attorney at Dunlap Bennett & Ludwig PLLC. She specializes in litigation and intellectual property law. …
Barnard Madsen’s 32-year legal career includes service on a U.S. congressman’s staff, as an Air Force judge advocate, a Special Assistant U.S. attorney, and Assistant Attorney General. He has served as a prosecutor and criminal defense counsel, and full-time for four years as an appellate counsel, and has now served twenty years in private practice. His current practice focuses on intellectual property, employment law, commercial litigation, and appeals. He has been voted multiple times by other attorneys as one of Utah’s Legal Elite in intellectual property and business litigation.
Barnard Madsen’s 32-year legal career includes service on a U.S. congressman’s staff, as an Air Force judge advocate, a Special …
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Method of Presentation:
Experience in trademark law
NY Category of CLE Credit:
Areas of Professional Practice
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About Dunlap Bennett & Ludwig PLLC
Dunlap Bennett & Ludwig is a multi-office general practice law firm based in suburban Washington, DC and Richmond, Virginia with a substantial intellectual property prosecution and litigation practice. DBL is ranked __ in numbers of trademark applications filed annually and __ in numbers of patents filed annually. In addition, DBL has litigated over a hundred IP cases in U.S. federal courts and manages dozens of proceedings at the Trademark Trial and Appeal Board. …
At Dunlap Bennett & Ludwig, we strive to invest in the success of each of our clients by offering top-notch legal advice and services at affordable prices, while establishing long-term relationships built on trust. We make it our mission to serve as fierce advocates, ensuring that every client has complete confidence in our expertise, and trust in our team.
DBL isn’t just lawyers. We are veterans, business owners, patent-holders, aerospace engineers, and MBA’s.
About Fillmore Spencer LLC
For over twenty years, Fillmore Spencer has been providing branding advice and helping clients large and small register and enforce their trademarks. From business matters to family matters, from legal advice to litigation, Fillmore Spencer is a full-service law firm, with three locations in Utah. Fillmore Spencer: solving problems and seizing opportunities–for you, your family and your business.