Posts Tagged ‘firm news’

On Thursday 4/18/13, 4 pm EST, I will present an online

Faculty Focused Community Conversation for the Center for Intellectual Property (CIP)

Program details: This discussion with trademark attorney and former USPTO trademark examiner Erik Pelton will cover basic trademark principals as well as several topics with particular impact on those in higher education, such as ownership issues and overbroad assertions of trademark rights.

For more information about Center for Intellectual Property (CIP), please visit

Here is a brief outline of some of the topics that will be addressed:

  • What is trademark protection?
    • Strong vs. weak trademark
    • Proper use
    • Registration
    • Infringement
  • Trademark issues and higher education
    • School logos and other marks
    • Re-branding (see: UC)
    • Interesting marks: mascots, class rings, and more
    • Ownership issues
    • joint ventures, contracts, etc.
  • Trademark bullying
    • What is it?
    • Penn Law School / Louis Vuitton
    • How it impacts the public
    • Avoiding backlash

I am proud to be one of the organizers for a new event that promises to be educational, exciting and unique. On April 24th, 2013, at the USPTO headquarters in Alexandria, Virginia, the Intellectual Property Law committee of the American Bar Association will present the first ABA-IPL Trademark Day: Behind the Scenes at the USPTO. The program is sure to be valuable to both new and experienced trademark practitioners. The event will feature a live TTAB hearing, and presentations from USPTO senior staff including the Commissioner for Trademarks Deborah Cohn and Chief Administrative Trademark Judge Gerard F. Rodgers. 

Details from the ABA’s website:

On April 24, 2013, the ABA Section of Intellectual Property Law, in conjunction with the USPTO, will host the inaugural ABA-IPL Trademark Day: Behind the Scenes at the USPTO. The program will take place at the USPTO campus in Alexandria, Virginia. The USPTO Operations Relating to Trademarks and Ex Parte Trademark Practice Committee and the USPTO Inter Partes Trademark Practice Committee invite you to join in on this exciting opportunity to learn more about the USPTO trademark operations up close and to network with USPTO officials.

The program will feature presentations from Trademark Office officials on topics such as electronic application filings, USPTO website tools, TTAB filings and procedures, and more, as well as a live TTAB hearing. Attendees will learn more about the examination process and the USPTO’s trademark operations. There will also be an opportunity for networking during lunch. Participants on behalf of the USPTO include Commissioner for Trademarks, Deborah Cohn, and Chief Administrative Trademark Judge Gerard F. Rogers.

Cost to attend is $50 ($30 for law students) including lunch, with 1.5 hours of CLE credits available.
Registration is now open.

Space is limited so be sure to register early!

If you have any questions, please let me know.

Advanced Trademark Prosecution: Challenging Third-Party Registration Evidence

Wednesday, April 10, 2013 at 12:30PM EST

Trademark Examining Attorneys frequently rely upon third-party registration evidence to establish that the relevant goods/services are sufficiently related to cause confusion. However, these third-party registrations are subject to several important limitations that applicants can often invoke to challenge their probative value and admissibility. In some cases, applicants may even offer third-party registration evidence of their own to rebut the grounds for refusal entirely. This presentation will review several effective and often overlooked strategies for responding to third-party registration evidence and ensure that applicants will have the best chance of overcoming a likelihood of confusion refusal.

Mark Donahey is an Associate Attorney with Erik M. Pelton & Associates, PLLC, a boutique trademark law firm located in Falls Church, Virginia, where Mark’s practice is focused on trademark prosecution,Trademark Trial and Appeal Board appeals, and inter partes disputes.Mark is a member of the Virginia State Bar and a 2009 graduate of George Mason University School of Law.



  • Fee Waived for AIPF Member Attorneys
  • Fee Waived for In House Counsel/Corporate Managers
  • $100 per Telephone Line for Non AIPF Member Practicing Attorneys

CLE credit may be available for an additional fee

for AIPF membership information, see here


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I am once again please to be one of the hosts of Meet the Bloggers – an annual gathering at the INTA conference. Last year’s gathering was attended by more than 100 guests and featured a fun raffle. My esteemed co-hosts are

This year’s event will be May 6th from 8 to 11 pm at the Press Box Grill on the corner of Elm and Ervay in Dallas. Please RSVP here so we know how guests many to anticipate.

Feel free to forward this invite/post on social media networks. 

– and use the hashtag #MTBIX –

If you plan to attend, please RSVP (click the image)

so we can plan accordingly for the proper number of people.

Click invitation for more details / RSVP info

Click invitation for more details / RSVP info