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Seminars

Feldman Gale Hosts International Trademark Association's Roundtable
"Advanced TTAB Practice and Procedure"

Group Discussion Leader: Susan Marsillo, Esq., Feldman Gale, P.A.

This course has been approved by The Florida Bar for:
2.50 General CLER, 2.50 Intellectual Property, 2.0 Antitrust Law and 2.0 Business Litigation

Date: July 25, 2007
Time: Noon
Location: Feldman Gale, P.A.
One Biscayne Tower, 30th Floor
2 South Biscayne Blvd.
Miami, FL 33131
Cost: $45 INTA member & non-members (includes lunch)

Discussion Outline

  1. Oppositions
    • Oppositions to published applications
      • Preparing the Opposers case
        • Extensions of time to oppose
        • Settlement negotiations prior to filing oppositions
        • Deciding what to assert
        • Anticipating defenses
        • Priority?
      • Grounds for opposition
        • Likelihood of confusion?
        • Dilution - What now after the TDRA?
        • Genericism?
        • Others?
      • Defenses
        • (a) Fraud in obtaining/maintaining registration
          (b) When should ignorance or mistake be accepted as a defense for a fraud claim?
        • Abandonment?
        • Counterclaims?
    • Discovery Strategy and Issues in Opposition Proceedings
      • Using discovery to facilitate settlement
      • Specific discovery devices
        • Early discovery?
        • Admissions
        • Depositions?
        • Motions to compel?
          • Need to file/Effect of not filing
      • Protective Orders
        • Access to confidential materials
        • Who must sign?
      • Discovery disputes
        • Motions
        • Use of TTAB telephone conferences
    • Evidentiary issues
      • Procedures for getting documents into evidence under 37 CFR § 2.122
      • The present and future admissibility of materials obtained via the internet
    • Amending pleadings
      • When it can be done?
      • What can be asserted
      • See Turbo Sportswear Inc. v. Marmot Mountain Ltd., 77 U.S.P.Q2d 1152 (TTAB 2006)
      • Counterclaim for cancellation?
    • Strategic consideration in Summary Judgment practice saving time and expense, narrowing the issues, testing the seriousness of the adverse party
    • Effect of Entry into Madrid Protocol on Opposition practice
  2. Cancellations
    • Cancellation of registrations on the Principal Register
      • When/why to file
        • Offensively
        • Defensively
    • Timing issues More than 5 years?
      • Cancellations of marks less than 5 years old any ground upon which the mark could have been opposed
      • Cancellations of marks more than 5 years old limited grounds for cancellation
    • Fraud as a basis for cancellation: "proven to the hilt," or "less than reasonable and honest"?
      • Practitioner pitfalls in verified statements to the PTO
      • Jimlar Corp. v. Montrexport S.P.A., Cancellation No. 92032471 (June 4, 2004)
      • Medinol Ltd. V. neuro Vasx, Inc., Cancellation No. 92040525 (May 13, 2003)
  3. Settlement
    • Pre-filing considerations
    • Timing
    • Agreements
    • Creative resolutions
  4. Ex Parte Appeals
    • The Notice of Appeal and the Record on Appeal
      • Requesting reconsideration of examiners decision-with or without a notice of appeal?
      • Appealable Matters-final refusals of the trademark examiner
      • Amendments to application during appeal
    • Substantive Issues on Appeal before the TTAB
      • § 2a-Marks constituting immoral, deceptive, disparaging or scandalous matter (in re Squaw Valley Dev. Co., 80 U.S.P.Q. 1264 (TTAB 2006); Michael J. McDermott v. San Francisco Womens Motorcycle Contingent, 2006 TTAB LEXIS 390 (Opposition No. 91169211)
      • § 2c-Marks identifying a particular living individual
      • § 2d-Deceptively similar marks
      • § 2e-Merely descriptive marks; primarily geographically descriptive marks (see In re Sterotaxis, Inc., 77 U.S.P.Q.2d 1087 (Fed. Cir. 2005); In re Grand Forest Holdings, Inc., 78 U.S.P.Q.2d 1152 (TTAB 2006); In re Westlake Plastics Co., 79 U.S.P.Q.2d 1151 (TTAB 2006)
      • § 2f Marks distinctive of the applicants goods in commerce (In re N.V. Organon, 79 U.S.P.Q.2d 1639 (TTAB 2006)
      • Other substantive issues on appeal use of proposed mark as trademark (In re Aerospace Optics Inc., 79 U.S.P.Q.2d 1861 (TTAB 2006)); disclaimers (In re Grass GmbH, 79 U.S.P.Q.2d 1600 (TTAB 2006)
    • Appeals of Board decision to the Federal Courts
      • Federal Circuit Court of Appeals-review by a three-judge panel
      • United State District Courts-a de novo civil action
    • Other cases
      • In re Rath, 402 F.3d 1207 (Fed. Cir. 2005)
      • In re Oppedahl & Larson LLP, 71 U.S.P.Q.2d 1370 (Fed. Cir. 2004)
      • In re Chatham Intl Inc., 71 U.S.P.Q.2d (Fed. Cir. 2004)

To register for this course, INTA members may register on line - non members use attached registration form.