Schedule and Faculty

Schedule times listed below are for the live seminar. Times for replays may differ due to varied start times and abbreviated lunch and break periods. Please refer to the DATES/LOCATION tab for individual replay start times.

8:30 – 9:00 a.m.

REGISTRATION & CONTINENTAL BREAKFAST

 

9:00 – 9:30 a.m.

Making the Case for Federal Trademark Registration

Trademarks are often the most significant and valuable assets held by a business and every business has at least one. Learn the importance of pursuing federal trademark registration and understand the many statutory benefits afforded federal trademark registrants. Understand when it makes sense to seek federal registration and when it doesn’t.

– Stephen R. Baird

 

9:30 – 10:10 a.m.

Mastering Section 2(d) of the Lanham Act: Strategies for Overcoming Likelihood of Confusion Refusals in the USPTO

Section 2(d) of the Lanham Act can form a powerful bar to registration of your client’s trademark. A trademark practitioner who has handled thousands of applications and registrations will explain successful strategies for overcoming likelihood of confusion refusals. Learn which duPont factors to highlight in your response, how and when to use consent agreements, and other alternatives for overcoming the rejection. Sample responses, consents and other useful documents will be provided.

– Felicia J. Boyd

 

10:10 – 10:25 a.m.

BREAK

 

10:25 – 11:05 a.m.

Mastering Section 2(e) of the Lanham Act: Strategies for Overcoming Descriptive, Geographic, Laudatory, and Surname Refusals

Section 2(e) of the Lanham Act provides a number of possible roadblocks to registration of your client’s trademark. Learn from an up and coming trademark practitioner what the Examining Attorney’s burden is for maintaining these types of refusals under Section 2(e) and gain valuable strategies for overcoming them. Sample office action responses will be provided.

– Draeke H. Weseman

 

11:05 – 11:45 a.m.

Is It a Mark or Not? Strategies for Overcoming Refusals Based on Genericness, Ornamentation, and Functionality

Has the Trademark Office taken the position that what your client is attempting to register isn’t a mark at all? Learn how these kinds of substantive refusal manifest themselves and gain valuable and practical tips for overcoming them. Sample office action responses will be provided.

– Michael T. Olsen

 

11:45 a.m. – 1:00 p.m.

LUNCH (Boxed lunches provided by Winthrop & Weinstine, P.A.)

Lunch provided at the live seminar only.

 

12:15 – 12:45 p.m.

SPECIAL LUNCHEON PRESENTATION

How to Develop a Reputation for Thought Leadership Using Social Media

– Ronald D. Coleman, Likelihood of Confusion Blog
– Aaron Keller, Capsule
– Seth Leventhal, Minnesota Litigator Blog
– Shayla Stern, Fast Horse
– Stephen R. Baird, DuetsBlog and Winthrop & Weinstine, P.A. (moderator)

 

1:00 – 1:40 p.m.

Mastering Section 2(a) of the Lanham Act: Strategies for Overcoming Deceptiveness, False Suggestion, Scandalous, and Disparaging Refusals

Section 2(a) provides an eclectic group of statutory bars to registration that cannot be overlooked by the trademark practitioner. Learn valuable and practical tips from experienced trademark counsel who has argued 2(a) refusals at the TTAB and the CAFC. Sample office action responses will be provided.

– Ronald D. Coleman

 

1:40 – 2:20 p.m.

Mastering Section 2(f) of the Lanham Act: Strategies for Proving Acquired Distinctiveness

The Trademark Office isn’t persuaded that your client’s mark is inherently distinctive…now what do you do? An experienced trademark practitioner will walk you through the steps of putting together a compelling 2(f) showing to prove acquired distinctiveness. Sample forms will be provided.

– Jennifer C. Debrow

 

2:20 – 2:35 p.m.

BREAK

 

2:35 – 3:15 p.m.

Strategic Use of Trademark Trial and Appeal Board Proceedings to Advance Trademark Registration Goals

What does Section 18 of the Lanham Act have to do with helping you achieve your client’s trademark registration goals? Learn valuable tips and practical TTAB strategies for advancing your clients’ marks to registration and avoiding undue narrowing of their rights when possible. Yes, forms here too.

– Stephen R. Baird

 

3:15 – 4:00 p.m.

Mastering Requests for Reconsideration and Ex Parte Appeals: Seasoned Practitioners and Former Trademark Office Examining Attorneys Discuss Strategies

These are not three blind mice to trademark prosecution practice. Some have experienced life inside the Trademark Office and now enjoy representing their diverse clients in the registration process from the outside looking in. Others have enjoyed successful outside counsel roles and then joined in-house corporate legal teams. What each brings to this panel is a diverse wealth of experience, allowing attendees to gain valuable tips and practical strategies from these seasoned professionals to refine your trademark prosecution practice.  An interactive format will provide you the opportunity to have all your requests for reconsideration and appeal questions answered.

– Barbara J. Grahn
– Danielle I. Mattessich
– James F. Voegeli
– Bradley J. Walz (moderator)

 

4:00 – 4:30 p.m.

RECEPTION

Enjoy complimentary hor d’oeuvres and beverages while you relax with your colleagues.