Alt Legal WebinarUpon Further Examination: Trademark Applications from the Examiner’s Perspective
Alt Legal Team | October 05, 2022
This webinar was recorded on November 3, 2022.
Understanding what trademark examiners are thinking and how they approach trademark applications can increase your chances of successfully registering a trademark. In this webinar, former USPTO trademark examiners Rebeccah Gan, Erik Pelton, and Brent Radcliff share details about how the application and examination processes work. They provide their insider perspective, discuss recent changes to how examiners handle some key issues like specimens and generic refusals, and explain procedures for maximizing success. In particular, topics include:
- Quick and easy checks to minimize administrative office actions
- Top reasons why trademarks are refused and how to predict examiners’ actions
- Tips and tricks for responding to office actions, including knowing when to call the examiner
View webinar recording here (free registration required).
Download the presentation materials here.
Resources
- If others of you are having trouble with trademark applications for cannabis products, check out this webinar recording.
- To learn more about searching TESS, check out Ed Timberlake’s webinar recording.
- Here’s another resource about searching TESS.
- Overcoming surname rejections is something that was covered in this webinar.
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For more about 2(f), check out this article.
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For more about the Booking.com decision, check out this webinar recording.
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There is a plugin for Chrome that gets the screenshot and includes the URL and date for a website specimen (called “GoFullPage”) (thanks, Jen Becker!) Also, FireShot on Chrome does this as well (thanks, Tyra Hughley Smith!)
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For more info about the post-registration audit program, check out this Alt Legal Connect recording from 2020.
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You can find our resources for failure to function here.
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The article Erik referred to here.
Speakers
Rebeccah Gan, Partner at Muncy, Geissler, Olds & Lowe
A former USPTO examining attorney, Rebeccah Gan is a partner at Muncy, Geissler, Olds & Lowe. Her practice encompasses trademark clearance, registration, and enforcement, focusing in particular on brand selection and management, as well as on litigating trademark opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board. Rebeccah is a frequent lecturer and author on intellectual property topics. She is also a polyglot, whose practice in maintaining global and domestic brands takes her around the globe.
Erik Pelton, Founder, Erik M. Pelton & Associates
Erik Pelton has dedicated his career to making intellectual property protection understandable, accessible, and affordable for businesses and entrepreneurs of all sizes and types. After beginning his career as a trademark examiner for the U.S. Patent and Trademark Office (USPTO), Erik built his own boutique trademark law practice at Erik M. Pelton & Associates that has helped clients register more than 3,000 a represented clients in hundreds of trademark disputes. In 2020, Erik published Building a Bold Brand and began supervising the trademark law clinic at Howard University School of Law, where he is an adjunct professor.
Brent Radcliff, Associate Counsel, Intellectual Property at Genuine Parts Company
Brent M. Radcliff, a former USPTO Examining Attorney, is currently Associate Counsel, Intellectual Property at Genuine Parts Company (“GPC”). Prior to his role at GPC, Brent was a Senior Intellectual Property Associate at Taylor English Duma LLP in Atlanta, GA, where he focused on trademark prosecution, enforcement, and intellectual property litigation. Brent remains active in numerous IP organizations including the ABA, INTA, and IP Inn of Court.