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Navigating Trademark Practice Before the PTO 2008: From Filing Through the TTAB Hearing (Live Webcast)

Feb. 21 - 22, 2008


Overview

Live Webcast on February 21-22, 2008 (E.S.T.)

This is a webcast of the live New York session.

Why You Should Attend

A federal trademark or service mark registration can be a very valuable business asset. The Patent and Trademark Office considers applications for registrations. The Trademark Trial and Appeal Board hears appeals when the Patent and Trademark Office refuses to register a mark and conducts contested proceedings between parties litigating the right to register a mark. Because these issues are often part of larger disputes regarding the right to use marks both in the conventional marketplace as well as in e-commerce, a basic understanding of TTAB practice and procedure is an important part of the skills required of intellectual property lawyers in the new economy.

What You Will Learn

  • Review of important recent TTAB decisions
  • Update on implementation of new TTAB rules
  • PTO and TTAB structure, jurisdiction and powers
  • Practical tips for trademark searching, clearanceand opinions
  • Grounds for refusal of registration
  • Importance of product configurations and functionality
  • Importance of non-traditional marks
  • Acquired distinctiveness issues
  • Likelihood of confusion principles
  • Challenges to registrability versus challenges to use
  • Strategy for discovery
  • Pleadings and related motions
  • Nature of a TTAB trial
  • Earn ethics credit - learn about fraud on the PTO

Who Should Attend

This program is designed for attorneys who practice trademark law or who are interested in learning about PTO and TTAB practice.

Special Bonus to all Registrants

All attendees will receive a complimentary copy of PLI's comprehensive Course Handbook. This softcover, bound volume was written to augment the program and to stand alone as a permanent reference. PLI's Course Handbooks represent the definitive thinking of the nation's finest legal minds, and are often the standard reference in the field.

Please Note: Webcast attendees will receive a downloadable version of the Handbook one business day prior to the program.

PLI Group Discounts

Groups of 4-14 from the same organization, all registering at the same time, for a PLI program scheduled for presentation at the same site, are entitled to receive a group discount.  For further discount information, please contact membership@pli.edu or call (800) 260-4PLI.

PLI Can Arrange Group Viewing to Your Firm

Contact the Groupcasts Department via email at groupcasts@pli.edu for more details.

Schedule

All times are E.S.T.
 
First Day: 9:00 a.m. - 5:00 p.m.  (E.S.T.)
 
Morning Session: 9:00 a.m.- 12:30 p.m.  (E.S.T.)
 
9:00  Introduction
 
Christopher C. Larkin, Helen Hill Minsker
 
9:15  Setting the Stage: The Nuts and Bolts of PTO and TTAB Practice
  • The U.S. Trademark Registration System
  • PTO and TTAB structure, jurisdiction and powers
  • PTO/Court Interface
Helen Hill Minsker
 
10:15  Trademark Searching and Clearance
  • Reasons to search
  • Practical tips for searching, clearance and opinions
  • Searching in light of Madrid Protocol
Robert B. Burlingame
 
11:15  Break
 
11:30  Prosecution Part 1 - 2 (d) and 2 (e) Refusals and Substantive Issues in Ex Parte Appeals
  • Likelihood of confusion
  • Genericness/descriptiveness
  • Other grounds for refusal of registration
Christopher C. Larkin
 
12:30  Lunch
 
Afternoon Session: 1:45 p.m. - 5:00 p.m.  (E.S.T.)
 
1:45  Prosecution Part 2 - Other Substantive Refusals and Acquired Distinctiveness
  • Geographic indicators
  • Product configurations
  • Non-traditional marks
  • Acquired distinctiveness issues
Philip G. Hampton, II
 
2:45  TTAB and Federal Circuit Cases Update
  • Review of important recent TTAB decisions
  • Highlights of recent TTAB rules changes

John L. Welch

3:45  Break

4:00  Ethical Issues in PTO and TTAB Practice

  • Candor with the PTO in ex parte prosecution
  • Fraud on the PTO
  • Ethical issues in inter partes proceedings

Linda K. McLeod

5:00  Adjourn

Second Day: 9:00 a.m. - 4:00 p.m.  (E.S.T.)

Morning Session: 9:00 a.m. - 12:15 p.m.  (E.S.T.)
 
9:00  TTAB Part 1 - Pleadings
  • Challenges to registrability vs. challenges to use
  • Standing
  • Grounds for opposition
  • The compulsory counterclaim rule
Leslie J. Lott
 
10:00  TTAB Part 2 - Discovery
  • Discovery strategy
  • Written discovery
  • Depositions
  • Motions to compel
Bradley Cohn
 
11:00  Break
 
11:15  TTAB Part 3 - Motions and Alternative Resolution
  • Summary judgment motions
  • Other types of TTAB motions
  • Settlement strategies
Carla C. Calcagno
 
12:15  Lunch
 
Afternoon Session: 1:15 p.m. - 4:00 p.m.  (E.S.T.)
 
1:15  TTAB Part 4 - Trial
  • Nature of a TTAB trial
  • Techniques of proof
  • Briefs and oral argument
Gary D. Krugman

2:15  Break 

2:30  Setting the Stage for Oral Argument
 
Christopher C. Larkin, Helen Hill Minsker
 
2:45  Live Oral Argument in a Contested TTAB Proceeding
 
Chief Administrative Trademark Judge J. David Sams,
Administrative Trademark Judge Karen Kuhlke,
Administrative Trademark Judge Ellen J. Seeherman
 
3:45  Questions and Answers with TTAB Judges
 
Chief Administrative Trademark Judge J. David Sams,
Administrative Trademark Judge Karen Kuhlke,
Administrative Trademark Judge Ellen J. Seeherman
 
4:00  Adjourn

Faculty

Co-Chair(s)

Christopher C. Larkin, Seyfarth Shaw LLP
Helen Hill Minsker, Banner & Witcoff, Ltd.

Speaker(s)

Robert B. Burlingame, Pillsbury Winthrop Shaw Pittman LLP
Carla C. Calcagno, Holland & Knight LLP
Bradley Cohn, Pattishall, McAuliffe, Newbury, Hilliard & Geraldon LLP
Philip G. Hampton, II, Dickstein Shapiro LLP
David M. Kelly, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
Gary D. Krugman, Sughrue Mion, PLLC
Karen Kuhlke, Administrative Trademark Judge, Trademark Trial and Appeal Board
Mark J. Liss, Leydig, Voit & Mayer, Ltd.
Leslie J. Lott, Lott & Friedland
Linda K. McLeod, Finnegan, Henderson, Farabow, Garrett, & Dunner, LLP
J. David Sams, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board
Hon. Ellen J. Seeherman, Administrative Trademark Judge, Trademark Trial and Appeal Board
John Welch, Lowrie, Lando & Anastasi, LLP

Program Attorney(s)

Tamara C. Kiwi, Program Attorney, Practising Law Institute

CLE Credit

PLI makes every effort to accredit its Live Webcasts.  Please check the CLE Calculator above for CLE information specific to your state.

PLI's Live Webcasts are approved for MCLE credit (unless otherwise noted in the product description) in the following states/territories:

Alabama, Alaska, Arizona, Arkansas, California, Colorado, Delaware, Florida, Georgia, Hawaii, Idaho*, Illinois, Indiana1, Iowa*, Kentucky*, Louisiana, Maine*, Minnesota, Mississippi, Missouri, Montana, Nebraska, North Carolina, North Dakota, New Hampshire*, New Jersey, New Mexico, Nevada, New York2, Ohio3, Oklahoma, Oregon*, Pennsylvania4, Rhode Island, South Carolina, Tennessee, Texas, Utah, Vermont, Virginia, Virgin Islands, Washington, West Virginia, Wisconsin, and Wyoming*.

*PLI will apply for credit upon request.

Arkansas, Mississippi, Ohio, Oklahoma, and Rhode Island: Audio-only live webcasts are not approved for credit.

1Indiana: Considered a distance education course. There is a 6 credit limit per year.

2 New York: Newly admitted attorneys may not take non-transitional course formats such as on-demand audio or video programs or live webcasts for CLE credit. Newly admitted attorneys not practicing law in the United States, however, may earn 12 transitional credits in non-traditional formats.

3Ohio: To confirm that the live webcast has been approved, please refer to the list of Ohio’s Approved Self Study Activities at http://www.sconet.state.oh.us. Online programs are considered self-study. Ohio attorneys have a 6 credit self-study limit per biennial compliance period. The Ohio CLE Board states that attorneys must have a 100% success rate in clicking on timestamps to receive ANY CLE credit for an online program.

4 Pennsylvania: A live webcast may be viewed individually or in a group setting. Credit may be granted to an attorney who views a live webcast individually. There is a 4.0 credit limit per year for this type of viewing. A live webcast viewed in a group setting receives live participatory credit if the program is open to the public and advertised at least 30 days prior to the program. Live webcasts viewed in a group setting that do not advertise at least 30 days prior the program will be considered "in-house", and therefore denied credit.

Running time and CLE credit hours are not necessarily the same. Please be aware that many states do not permit credit for luncheon speakers.

Note that some states limit the number of credit hours attorneys may claim for online CLE activities, and state rules vary with regard to whether online CLE activities qualify for participatory or self-study credits. For more information, refer to your state CLE website or call Customer Service at (800) 260-4PLI (4754) or email: info@pli.edu.

If you have already received credit for attending some or the entire program, please be aware that state administrators do not permit you to accrue additional credit for repeat viewing even if an additional credit certificate is subsequently issued.



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