ADVANCED TRADEMARK LAW: NEW DEVELOPMENTS, M & A DUE DILIGENCE AND OVERCOMING USPTO REFUSALS
In-Person Live Seminar
ITEM #:  1035172101   |   EVENT CODE:  341409    |   CREDIT STATUS:  APPROVED
MEMBER PRICE
$155.00
STANDARD PRICE
$175.00
MSBA MEMBER, NEW LAWYER, AND OTHER DISCOUNTS, IF APPLICABLE, WILL BE APPLIED DURING CHECKOUT.

IN-PERSON PASSHOLDERS:
You may use your Pass to register for the live webcast at no charge.

Thursday, February 25, 2021

1:15 PM - 4:50 PM   |   Check-In:  12:45 PM

LIVE ONLINE ONLY – NO IN-PERSON ATTENDANCE
In-Person Passholders – You may use your Pass to register for the live webcast at no charge.

Advanced Trademark Law: New Developments, M & A Due Diligence and Overcoming USPTO Refusals

This advanced level course is designed for more experienced trademark lawyers and is essential for corporate and law firm attorneys who specialize, or often find themselves involved, in trademark law. This course brings together an outstanding expert faculty of practitioners and industry experts who will provide information on the most recent developments and trends in trademark law. Topics include:

  • Overcoming Refusals Based on Genericness, Ornamentation and Functionality
  • Strategies for Overcoming Likelihood of Confusion Refusals at the USPTO
  • Trademark Due Diligence in Mergers and Acquisitions
  • Recent Trademark Decisions and Litigation

Bonus Summary Guide: All attendees will receive an electronic copy of Minnesota CLE’s Summary GuideTM to Trademark Law to download and/or print. This helpful and concise at-a-glance reference tool includes formatted charts, diagrams and checklists to have at the ready to clarify legal issues quickly and visually.


See also:

Introduction to Trademark Law: How to Create, Register and Enforce Trademark Rights


Webcast also included in the following webcast package(s):

Basic to Advanced Trademark Law: Strategies for Protecting a Company’s Most Important Asset

12:45 – 1:15 p.m.
JOIN ONLINE


1:15 – 2:00 p.m.
Is it a Mark or Not? Overcoming Refusals Based on Incapability and Failure to Function as a Mark
Has the Trademark Office taken the position that what your client is attempting to register isn’t a mark at all? These kinds of refusals can be frustrating, especially when the relied-upon evidence does not even purport to support a genericness refusal, and the Supplemental Register is not offered as a viable alternative. Learn how these kinds of substantive refusals manifest themselves and gain valuable and practical tips for overcoming them.
– Stephen R. Baird


2:00 – 2:05 p.m.
BREAK


2:05 – 2:50 p.m.
Strategies for Overcoming Likelihood of Confusion
Refusals at 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 hundreds 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.
– Felicia J. Boyd


2:50 – 3:00 p.m.
BREAK


3:00 – 4:00 p.m.
Trademark Due Diligence in Mergers and Acquisitions
Trademarks are unique assets that are very different from real property or tangible property. And in many mergers and acquisitions, the brand names and goodwill are key assets being acquired. Because of the complex and fluid nature of trademarks, including territoriality and use requirements, post-transaction trademark needs can materially differ from the pre-transaction trademark portfolio. Careful evaluation of a target’s trademark portfolio and key coexistence agreements, licenses, infringements, lawsuits, and other encumbrances and limitations is critical to valuing the transaction, structuring the transaction, and completing the transaction. At the same time, a brand owner should have an eye towards due diligence when building its trademark portfolio. Learn from our experienced in-house counsel about how to prepare for trademark due diligence, how to favorably present trademark information for due diligence, and how to organize, prioritize, and evaluate voluminous trademark information during due diligence.
– Marshall Brenner, Joel R. Feldman & Ashley Zito


4:00 – 4:05 p.m.
BREAK


4:05 – 4:50 p.m.
20/20 Hindsight on Recent Trademark Decisions and Litigation
Two trademark law experts discuss significant trademark decisions from the past year and their practical implications for in-house and outside counsel. This year’s principal cases include Romag Fasteners v. Fossil and USPTO v. Booking.com, among others.
– Dean C. Eyler & Heather J. Kliebenstein

12:45 – 1:15 p.m.
JOIN ONLINE


1:15 – 2:00 p.m.
Is it a Mark or Not? Overcoming Refusals Based on Incapability and Failure to Function as a Mark
Has the Trademark Office taken the position that what your client is attempting to register isn’t a mark at all? These kinds of refusals can be frustrating, especially when the relied-upon evidence does not even purport to support a genericness refusal, and the Supplemental Register is not offered as a viable alternative. Learn how these kinds of substantive refusals manifest themselves and gain valuable and practical tips for overcoming them.
– Stephen R. Baird


2:00 – 2:05 p.m.
BREAK


2:05 – 2:50 p.m.
Strategies for Overcoming Likelihood of Confusion
Refusals at 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 hundreds 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.
– Felicia J. Boyd


2:50 – 3:00 p.m.
BREAK


3:00 – 4:00 p.m.
Trademark Due Diligence in Mergers and Acquisitions
Trademarks are unique assets that are very different from real property or tangible property. And in many mergers and acquisitions, the brand names and goodwill are key assets being acquired. Because of the complex and fluid nature of trademarks, including territoriality and use requirements, post-transaction trademark needs can materially differ from the pre-transaction trademark portfolio. Careful evaluation of a target’s trademark portfolio and key coexistence agreements, licenses, infringements, lawsuits, and other encumbrances and limitations is critical to valuing the transaction, structuring the transaction, and completing the transaction. At the same time, a brand owner should have an eye towards due diligence when building its trademark portfolio. Learn from our experienced in-house counsel about how to prepare for trademark due diligence, how to favorably present trademark information for due diligence, and how to organize, prioritize, and evaluate voluminous trademark information during due diligence.
– Marshall Brenner, Joel R. Feldman & Ashley Zito


4:00 – 4:05 p.m.
BREAK


4:05 – 4:50 p.m.
20/20 Hindsight on Recent Trademark Decisions and Litigation
Two trademark law experts discuss significant trademark decisions from the past year and their practical implications for in-house and outside counsel. This year’s principal cases include Romag Fasteners v. Fossil and USPTO v. Booking.com, among others.
– Dean C. Eyler & Heather J. Kliebenstein

$155 MSBA members / $155 paralegals / $175 standard rate

Other discounts that may apply:

Scholarships available!
Need-based scholarships are available for in-person and online seminars. For further information or to obtain a scholarship application, contact us at 800-759-8840 or customerservice@minncle.org.

Minnesota CLE is applying to the Minnesota State Board of CLE for 3.25 standard CLE credits. The maximum number of total credits attendees may claim for this program is 3.25 credits.

MEMBER PRICE
$155.00
STANDARD PRICE
$175.00
MSBA MEMBER, NEW LAWYER, AND OTHER DISCOUNTS, IF APPLICABLE, WILL BE APPLIED DURING CHECKOUT.

IN-PERSON PASSHOLDERS:
You may use your Pass to register for the live webcast at no charge.

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