USPTO Insider Panel
Most of us trademark practitioners will never work at the USPTO. And generally speaking, former USPTO Examining Attorneys have had all the insider tips, strategies, and secrets...until now!
Tune in to watch a 2.5-hour panel featuring not one, not two...not even three...but a total of FOUR ex-USPTO Examining Attorneys and they're not holding anything back.
Syllabus:
This panel explored questions such as:
- What are the most common mistakes you saw as an EA, among Pro Se Applicants? What about among Attorneys of Record?
- What are the telltale signs that the Attorney of Record is a newbie?
- What are some examples of non-material alterations to a mark that are accepted?
- What is the extent of advice or help that an EA can provide on an application?
- Once and for all - what are some examples of words that can be added to a mark to help differentiate it from a Cited Mark and avoid a LOC finding?
- Could you provide guidance on related classes? It seems like some are a stretch (such as coffee and tea being confused with wine and beer)
- What other "gotcha" rules are there? Like how book titled can only be registered in a series.
- Are Office Actions sometimes just issued as a matter of procedure, but the EA will probably accept a decent argument?
- Are some types of specimens favored over others? If you have multiple specimens to choose from, what are the "best" ones/that have the highest chances of success?
- Why do additional Office Actions (often a substantive refusal) issue later?
- What, if anything, can we as Attorneys of Record do when an application is suspended (aside from checking it often)?
- Is the "kitchen sink" application strategy effective? Frowned upon?
- What are 3 (or more) strategies/tips you use from your experience as an Examiner, now in your private practice?
- And so much more!
This course was taught by Sonia Lakhany, Ed Timberlake, Rachael Dickson, Erik Pelton, and Courtney Alvarez in July of 2024.
Testimonial:
“Thanks to you and Erik for creating and providing great
content!” – Xavier Hailey
USPTO Insider Panel is backordered and will ship as soon as it is back in stock.
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