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Alt Legal Connect Preview – An Interview with Panelist Erik Pelton

Alt Legal Team | June 28, 2021
4 min read

Alt Legal is looking forward to hosting its second annual virtual trademark conference, Alt Legal Connect, on September 13-15, 2021. One of the sessions in our amazing lineup is “Spring into (Office) Action: Dealing with and Overcoming OA Refusals” featuring panelist Erik Pelton. Erik joined us ahead of the conference to give us a preview of what he and his co-panelists will be discussing, why his session is so important, and what he’s most excited about at Alt Legal Connect. Check out the video interview or read what he had to say below.

Tell me about your session and what you’ll be talking about.

I’m very excited about this session and this conference as a whole. Our session is going to be dealing with and overcoming office action refusals. Along with my amazing co-panelists Kelu Sullivan and Ruky Tijani, we’re going to do a deep dive into failure to function refusals, likelihood of confusion refusals, and merely descriptive refusals. There’s a lot of ground to cover in just an hour but we’re looking forward to it.

What is most exciting about your session topic?

I think what’s really exciting is #1, as trademark practitioners, we’re always dealing with office action responses, drafting responses, advising clients on opportunities to take and choices to make in terms of strategies when they get a refusal and seeing through and hopefully getting those applications approved. These topics, likelihood of confusion and descriptiveness, are tried-and-true topics that everyone’s familiar with. Failure to function has really grown in the last handful of years in terms of the number of issues and refusals that are coming up, so it’s going to be very timely. There have also been a series of TTAB decisions relating to failure to function in the last few years. (See more about failure to function, ornamental refusals, and merely informational refusals.)

The second reason this is exciting us as panelists is that we’re going to talk about practical things – what to look for in the refusals and what to think about in framing an argument to respond that will hopefully be successful. Of course, it always depends on the unique facts and circumstances. But we’re going to show some real-world examples, some real language, and real serial numbers so people can do a deeper dive afterwards.

What is the most important skill or piece of knowledge people will get from your session?

It’s going to be built around those tangible, actual examples of language and responses, coming from both office actions and responses. I’m specifically going to focus my portion of the discussion on descriptiveness. One thing I’m incorporating that I don’t think is talked about a lot is the Supplemental Register and the decision of whether to accept the Supplemental Register, to fight it, or to not respond at all. There are some circumstances where you’d rather not accept the Supplemental Register and how and when to analyze those different choices.

Within the three panelists we may have slightly different philosophies, which is great because in trademark law there isn’t one correct answer, there are different ways to get there. Ruky, Kelu, and I bring different backgrounds, experiences, and clients to the presentation. We are also looking forward to having a lot of dialogue to share our own experiences and tips and to play around with those issues where there are choices and differences of opinion.

What is the most important information you learned about when researching your session topic?

In addition to thinking about the Supplemental Register in putting together this presentation is acquired distinctiveness. I get a lot of questions about it in terms of when and how can you claim acquired distinctiveness, particularly when the 5 years doesn’t apply or isn’t accepted, the other types of evidence and circumstances and how to build that case. That’s part of responding to a descriptiveness refusal as an option to think about and so that’s an exciting part for me.

What was your favorite part of Alt Legal Connect last year?

My favorite part of Alt Legal Connect and a lot of what Alt Legal does, not just at Connect, but what it does throughout the year is bringing together a community and building and growing that community. In addition to providing great content, and what I think is wonderful about Alt Legal, is that Alt Legal provides substantive legal content like our session about office action refusals, as well as practical content and thinking about other important issues that affect us as practitioners, whether it’s social and racial justice, ethics, technology and managing your own practice, and all of those other things are important beyond the substance. The community, the chats, networking events that Alt Legal Connect brings to the table to really grow and build that community is important because sometimes we can feel like we are in silos, especially over the last year and a half, and particularly those of us in smaller firms no matter whether it’s a pandemic or not. So having this community and knowing that there are so many other people to establish relationships with, learn from, share with, to mentor or be mentored by is really wonderful and Alt Legal is doing a great job with that.

What are you most looking forward to at Alt Legal Connect this year?

I’m really looking forward to the session “In Recent Exposure: Current Topics in Trademark Law” presentation because two of my favorite trademark people, well, two of my favorite people overall anytime are on that panel, Anne Gilson LaLonde and Rebeccah Gan, they are both incredibly knowledgeable and experienced, and fun, interesting people, so that’s going to be a really great presentation. Also, “IP Matters: Practical ways that IP lawyers can advance social justice” is a very important topic with really great speakers. I really look forward to learning a lot in that session.

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