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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 http://www.cipcommunity.org/

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

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.

SPACE IS LIMITED

COST TO PARTICIPATE

  • 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