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Your source for news, updates and guidance on all things trademarks and intellectual property.

Alt Legal Connect Preview An Interview with Panelist Rukayatu Tijani

Alt Legal Team | July 10, 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 Rukayatu Tijani. Ruky joined us ahead of the conference to give us a preview of what she and her co-panelists will be discussing, why her session is so important, and what she’s most excited about at Alt Legal Connect. Check out the video interview or read what she had to say below.

Tell me about your session and what you’ll be talking about.
During this session, I along with my esteemed colleagues Erik Pelton and Kelu Sullivan, will discuss some of the thorniest office action refusals that trademark applicants and practitioners face. We’ll also discuss some successful arguments that have been used historically to overcome such difficult refusals.

What is most exciting about your session topic?
What I love most about the topic is that it’s really practical. When Erik and Kelu and I had a discussion prior to the presentation we really talked about getting into the nitty gritty of some of the successful arguments that have historically been used to overcome some of the thorniest refusals. To give you some context, some of the refusals that we’ll be talking about are the likelihood of confusion refusal (§2(d) refusal), the descriptiveness/merely descriptive refusal (§2(e) refusal), and the seemingly increasing failure to function refusal. Because it’s so practical, it’s given me, as a trademark practitioner and a “trademark nerd”, the ability to really dig into some of the knottiest and seemingly impenetrable office action refusals that even the most seasoned practitioners can’t seem to overcome.

I’ve been tasked with discussing the failure to function refusals, particularly against the backdrop of a growing online entrepreneurship and social media community. Failure to function refusals have really grown in response to applicants attempting to trademark or exclusively own phrases or slogans that have become widely popular, or “commonplace”, as the USPTO notes. Some popular terms that I’ll be discussing include HOT GIRL SUMMER by Megan Thee Stallion, TACO TUESDAY by LeBron James, and BLACK LIVES MATTER.

There’s been a deluge of applications filed with the USPTO over the past year. Filing an application is relatively simple and straightforward so a lot of people, in response to viral words or phrases, have tried to apply for trademarks for particular phrases. For example, earlier last year, there were dozens of applications with the word CORONA or COVID in response to the COVID-19 pandemic. So that’s what we’ll be discussing and hopefully we’ll be able to provide significantly practical advice in overcoming such thorny refusals.

What is the most important skill or piece of knowledge people will get from your session?
It really is getting into the nitty gritty of the argument. We’ll be able to demystify what a failure to function refusal is against the backdrop of the Lanham Act. As a result, we’ll be able to quell a lot of the anxiety tied to this and other thorny office action issues. We’ll learn by unpacking successful office actions, paragraph by paragraph, how other practitioners or applicants have overcome such seemingly difficult refusals.

What is the most important information you learned about when researching your session topic?
Before I answer this question, let me put this into context. I am a Millennial, I’m from Brooklyn, New York, I love pop culture and exploring the intersection of IP, social justice, and pop culture. So one of the things that I recently learned is that Megan Thee Stallion, who is a wildly popular musical entertainer, recently overcame not one, but three failure to function office action refusals for the term HOT GIRL SUMMER, which is a term that went viral and had so much use in the marketplace in the summer of 2019. After a protracted two-year long battle which included appeals to the TTAB, her mark was sent to the Official Gazette (at the time of this recording), which is the next to last step before registration. So considering how wildly popular the term HOT GIRL SUMMER became, the case of Megan Thee Stallion’s application is really a great case study to unpack. We’re going to be looking at the arguments, the evidence submitted to overcome the failure to function refusal, and because it was such a long battle that included appeals to TTAB, there are going to be a lot of great arguments and evidence to unpack and assess to determine how she overcame a refusal that a lot of people said could not be overcome.

What was your favorite part of Alt Legal Connect last year?
My favorite part was the community. One of the things I love about Alt Legal, not only the webinars, but the chat within the session is always lively! People are connecting with each other, people are chatting with each other, people are asking multiple questions. The community is something that I’m really looking forward to. Some of my closest colleagues who I’ve been able to engage with over the last year are people who I met at Alt Legal. I love that the conference platform that we used last year really allowed us as practitioners to network with each other between sessions. So that’s one thing I’m looking forward to this year.

What are you most looking forward to at Alt Legal Connect this year?
Again, meeting members of the community and people who are really excited about the work they do. Also, in light of some of the recent changes in trademark law, just being able to discuss those changes. The last year brought about some major changes, especially with the rollout of the Trademark Modernization Act of 2020. I’m really looking forward to learning the tips and tools that trademark practitioners are going to adopt to help their clients, their communities, and their brands.

Besides your own session, what session at Alt Legal Connect are you most excited to attend?
There are so many good sessions! Alt Legal always does a really good job of providing really practical and timely sessions. But I would have to say, the one I’m most looking forward to is Be Fab with TTAB: Tips for Successfully Pursuing, Defending, and Settling TTAB Disputes. I’m sure that was a play on words from Bri [Bri Van Til, Alt Legal, Director of Education]! I’m excited to learn more about TTAB proceedings as a prior litigation attorney, it’s always really good to return back to that world with really rich knowledge of trademarks, in particular, and IP, in general. I’m really excited to see what the panelists discuss against the backdrop of the Trademark Modernization Act which is intended to change the landscape of TTAB in the sense of making us cancel a mark that may have been used for a long time. I know the Trademark Modernization Act gives us a lot of avenues to take a mark off of the Principal Register without having to go to TTAB. I want to know what that interplay is going to look like in light of the Trademark Modernization Act.

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