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Alt Legal Blog

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

I ♡ Trademarks Conference 2025Don’t Jump to Confusions: Overcoming Trademark Refusals Across Borders

Alt Legal Team | January 27, 2025
3 min read

At the Alt Legal I ♡ Trademarks Conference, taking place on March 18, 2025, IP attorneys Lydia Gobena (Fross Zelnick) and M.J. Williams (Wissing Miller) will present the session, “Don’t Jump to Confusions: Overcoming Trademark Refusals Across Borders.”

From non-distinctiveness to likelihood-of-confusion, trademark refusals come in many forms. Navigating those refusals can be especially complex when dealing with multiple jurisdictions. In this session, the presenters will share practical tips to overcome office actions and refusals and discuss strategies for U.S. clients filing abroad, foreign clients filing in the U.S., and those managing global portfolios. In particular, they will discuss:

  • Common grounds for refusal in major jurisdictions and how to address them
  • Practice tips for bridging differences between U.S. and foreign IP Office requirements
  • Approaches to overcoming obstacles like non-distinctiveness, descriptiveness, deceptiveness, and confusion
  • Best practices for maintaining consistent brand protection strategies worldwide

Learn more about the Alt Legal I ♡ Trademarks Conference here.

Register for the Alt Legal I ♡ Trademarks Conference here.

Speakers

Lydia Gobena, Partner, Fross Zelnick

Lydia Gobena’s passion for creativity permeates her broad global practice with innovative strategies for acquiring, enforcing, and assigning international intellectual property rights. From counseling clients on international trademark, industrial design, copyright, and unfair competition issues to litigating international and multi country conflicts, Lydia gets results for her clients, including protection of nontraditional trademarks such as single colors and sound. Lydia has championed countless court and trademark office decisions for major brand owners acknowledging the fame of their trademarks in jurisdictions around the world, thereby preventing the registration and – in certain instances – use of infringing third-party trademarks. She also secured one of the first criminal convictions for trademark infringement in Chile. Recently described as a “key partner” in Chambers USA, Lydia has deep experience in obscure international jurisdictions, including conducting global trademark clearance projects with analysis and evaluation of search data and related risks. She investigates and negotiates issues relating to third-party rights, implements global filing strategies, and advises on domain name protection for ccTLDs (country code top level domains) and gTLDs. Her transactional work includes IP portfolio audits and due diligence for acquisitions and divestitures. Lydia’s diverse international clientele has included leading pharmaceutical and hotel companies, luxury goods companies, personal care companies, entertainment properties, beverage and sports brands, and a leading provider of engineering and architectural software.

M.J. Williams, Partner, Wissing Miller

M.J. Williams is a partner at Wissing Miller LLP, a boutique intellectual property firm in New York City. She provides practical, strategic counsel on trademark matters to creatives and creative businesses, from start-ups to global corporations in nearly every industry, including beverage and hospitality, consumer and industrial goods, technology, supply chain logistics, fashion, education and culture, publishing, and travel. M.J. offers clients a soup to nuts practice – trademark selection, registration, portfolio management, licensing, enforcement, disputes, litigation, and acquisitions – fed by her holistic understanding of trademarks’ eventful lifetimes in the U.S. and abroad.

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