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USPTO Boot Camp: Trademark Edition

Loeb & Loeb LLP is pleased to announce that Loeb partner Doug Masters will be a panelist at USPTO Boot Camp: Trademark Edition.

From the ACI website:
Trademark attorneys face an increasingly demanding atmosphere when they shepherd a trademark application through the USPTO. Denials of trademark applications based on fraud, pressures of conducting cost effective trademark searches, and complexities of negotiating coexistence agreements with other trademark owners raise the stakes for the trademark bar.

The benefits of knowing how to navigate the nuances of the USPTO are invaluable, but the consequences of ignorance could shatter the marketing, promotion, and legal plans invested in the trademark.

Now is the time to strengthen your awareness of the USPTO trademark application process. Now is the time to refine your skills in dealing with trademark examiners. Now is the time to learn from the experts. With your needs in mind, ACI designed USPTO Boot Camp: Trademark Edition to focus on the core issues facing attorneys in this vital area of trademark law.

Agenda Highlight

8:45 AM - Preventing Fraud on the USPTO in a Trademark Application in an Era of Increased Scrutiny - featuring Loeb partner Douglas Masters. 

  • Deconstructing the USPTO’s criteria for determining whether a trademark application is fraudulent
    • Investigating examples of applications deemed fraudulent by the USPTO
  • What are the consequences of fraud on the USPTO?
    • When does the USPTO consider the fraud to occur?
    • When the fraud is unintentional, what impact will it have on the USPTO’s decision?
  • Determining the appropriate strategy in dealing with fraud on the USPTO
    • When should you consider abandoning the trademark application in question and re-filing a new trademark application?
    • When will amendment of the trademark application after the fact absolve the fraud?
  • Securing the complete history of the use of the trademark on the goods or services in the application to minimize fraud on the USPTO
    • What isn’t the client telling you?
    • Accurately describing the goods or services attached to the mark
    • Ensuring the client understands the consequences when its actual use of the trademark on goods or services does not match the use stated on the trademark application
    • Amplifying the proof with evidence of use from independent sources
    • Certifying that foreign clients fully understand the USPTO process and the consequences of misinformation on the trademark application
    • Designing a post-registration strategy concerning trademark registration maintenance and renewals
  • Applying the remedial actions available when the application alleges a date of first use that is earlier than the actual date of first use
  • Deciding the appropriateness of an audit to uncover potential sources of fraud and consequent invalidation of the trademark registration
    • Identifying trademark registrations that may be candidates for abandonment and subsequent re-filing
  • Analyzing your strategy for defusing potential fraud issues in a USPTO trademark application to identify potential malpractice considerations
  • Establishing an atmosphere of cooperation with the USPTO trademark examiners from the beginning of the application process