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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