IP Law Part 1: Foundations and Trademark

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Every IP question a client brings starts with two decisions: which regime (patent, trademark, copyright or trade secret) actually protects the asset, and which forum will decide a dispute over it. This program gives attorneys a working foundation in both, then follows a trademark from selection to international protection. Attendees will learn why each regime trades the incentive to create against public access, and where the governing law lives: Titles 35, 15 and 17, USPTO guidance, the federal courts, the Trademark Trial and Appeal Board (TTAB) and the International Trade Commission (ITC). They will also see how the spectrum of distinctiveness (generic, descriptive, suggestive, arbitrary, fanciful) drives whether a mark can be registered and how strong it is. Two worked examples carry the trademark material. The first is a clearance search that ends in a go, proceed-with-caution or no-go opinion. The second is a likelihood-of-confusion dispute, including what the TTAB can and cannot order. The program closes with the Madrid Protocol, its five-year “central attack” risk, and when a two-track filing strategy makes sense. It is designed for general practitioners, business and transactional attorneys, in-house counsel and litigators who advise clients on brands and IP but do not practice in the area every day.

Learning objectives:

• Explain the incentive-versus-access trade-off behind patent, trademark, copyright and trade secret protection, and match a client asset to the right regime.
• Identify the governing statute, agency guidance and forum for a given IP question.
• Place a proposed mark on the spectrum of distinctiveness and outline a clearance search and opinion.
• Guide a mark through filing, examination and an Office Action response, assess likelihood of confusion, and recognize the limits of TTAB remedies.
• Evaluate when the Madrid Protocol fits a client’s international plans, and manage central-attack risk.

To register for the upcoming live webinar, please check back later.