New CLE on Trademark Prosecution: Responding to Office Actions and Likelihood of Confusion

Your client decides on the name FancyStar for her new line of designer jewelry. You finally hear back from the USPTO after filing the trademark application, but the examining attorney isn’t so excited about the trademark. In the Office action, the examining attorney states that the term ‘Fancy’ in the trademark could possibly lead to a likelihood of confusion with other established jewelry marks. How do you respond to this office action?

Office Actions

When a USPTO trademark examining attorney issues an Office action about your trademark, the Office action indicates that there are legal issues with respect your trademark application.

In this second installment on trademark prosecution, Michael Feigin provides a lively and practical discussion on how to respond to Office actions from the USPTO. Michael will discuss the likelihood of confusion standard and also covers a number of key refusals. This is a highly practical course and Michael uses a number of interesting case examples from his own practice. To access the course please click here: Trademark Prosecution Part II: Responding to Office Actions and Likelihood of Confusion.

Additional issues covered:

  • The refusal of surnames
  • Significance in the industry that the goods are made
  • The description of goods/services
  • Descriptive trademarks
  • The benefits of the primary & supplemental register
  • The trademark description
  • Identification of services
  • Missing deadlines
  • Translation issues
  • False connection
  • How to proceed if the specimen is deemed unacceptable

A graduate of Rutgers University Jersey and Seton Hall Law School, Mr. Feigin is a licensed Attorney in New Jersey, New York and at the United States Patent and Trademark Office. As an Intellectual Property attorney, he focuses his practice on drafting patents and prosecuting trademarks for clients.

This CLE course is offered in the following states:

  • Alaska (AK)
  • Arizona (AZ)
  • California (CA)
  • Connecticut (CT)
  • District of Columbia (DC)
  • Illinois (IL)
  • Maryland (MD)
  • Massachusetts (MA)
  • Michigan (MI)
  • Missouri (MO)
  • New Hampshire (NH)
  • New Jersey (NJ)
  • New York (NY)
  • North Dakota (ND)
  • Pennsylvania (PA)
  • South Dakota (SD)

Attorney Credits offers CLE for attorneys in New Jersey and around the country. For more information about CLE in New Jersey please click the following link: NJ CLE.