Live Video Rebroadcast CLE Seminar
U.S. Trademark Registration:
The Attorney's Role from Clearance to Renewals
July 2, 2013
Note: This seminar was recorded live in October 2012. The speaker will be available LIVE after the seminar to answer your questions.
The selection, registration, and maintenance of a trademark are essential steps in the development and protection of a client's brand. As brands are now commonly recognized as the cornerstone of a client's commercial identity and one of a client's most valuable assets, the ability of practitioner to successfully register a trademark has become more important than ever. While trademark applications are typically handled by attorneys specializing in intellectual property law, practitioners and corporate counsel without a background in intellectual property can master the steps necessary to successfully register a trademark by learning the basic tenets of trademark law and the policies and procedures of the U.S. Patent and Trademark Office.
This program covers all aspects of the trademark registration process, from conducting trademark search reports and drafting trademark availability reports, to the preparation and submission of trademark applications. Once a trademark application is submitted for review by the USPTO, an attorney must oversee the prosecution of an application and must be familiar with the grounds that an application may be refused registration and the strategies and arguments used to overcome such refusals. Finally, an attorney must be familiar with the final steps prior to registration and the potential for an interested third party to oppose the registration of a trademark and initiate an opposition proceeding which can ultimately decide if a trademark will register.
As the trademark process does not end once a trademark registers, this program with also cover the steps necessary to renew and maintain a trademark registration and how best to employ an effective policing strategy including trademark watching and in some cases the use of demand letters and litigation. The program closes with a discussion of some ethical issues faced by attorneys that are specific to the clearance, registration, maintenance, and policing of a trademark.
Attorney Evan Anderson
Brand Ventures Intellectual Property Law – Los Angeles, CA
Evan Anderson is the founder and managing partner of Brand Ventures Intellectual Property Law. Mr. Anderson's practice focuses primarily on addressing the intellectual property needs of start-ups, entrepreneurs, artists and established companies. Mr. Anderson specializes in brand development and protection through the implementation of innovative business and intellectual property strategies. Mr. Anderson works with clients at every stage in the development and protection of their businesses and brands to maximize the return on their investment while building powerful intellectual property portfolios.
By assessing each client's intellectual property rights and needs, Mr. Anderson frequently counsels clients on the selection, registration and maintenance of trademarks, copyrights, trade dress, domain names, design patents, and other forms of intellectual property assets. Mr. Anderson's practice also involves representation of clients in domain name disputes, intellectual property licensing, dispute resolution, trademark prosecution, intellectual property litigation before the USPTO and in Federal Court, and matters involving entertainment, internet, media, and fashion law.
Mr. Anderson's experience and expertise includes:
- Counseling clients on the selection, adoption, development and use of new trademarks, trade names, and trade dress.
- Counseling clients on highly specialized brand management, development and protection strategies
- Conducting, reviewing and analyzing trademark and copyright availability reports.
- Handling the registration and prosecution of U.S. and foreign trademarks for a diverse range of companies and entrepreneurs in such industries as automotive, food and beverage, cosmetics, chemical, real estate, education, telecommunication, entertainment, alcohol, tobacco, apparel, toy, retail, e-commerce, social media, Internet, finance, electronics, and textiles.
- Managing various extensive trademark domestic and international trademark and intellectual property portfolios and conduct periodic maintenance, watching, and valuation reports.
- Counsel, draft strategy reports, and draft agreements for IP licenses, assignments, and joint ventures.
- Consulting arranging for clients contact with industry specific specialists.
- Drafting and negotiating entertainment contracts for the license, distribution, service provision, appearance, assignment, and promotion of talent and content.
- Conducting due diligence of IP assets for acquisitions, capital investment, and sale or merger agreements.
- Providing pre-trial and litigation assistance in federal litigations and arbitrations by preparing motions, briefs, and legal memoranda; taking and defending depositions and preparing witnesses for trial; managing discovery requests, responses and disputes.
- Representing clients in trademark disputes and ex parte appeals before the Trademark Trial and Appeal Board
- Responding to Office Actions before the United States Patent and Trademark Office
- Representing client in ICANN domain name dispute proceedings before the World Intellectual Property Organization (WIPO).
- Litigation in Federal District Court in the Central District of Central California and Northern California.
Prior to founding Brand Ventures Intellectual Property Law, Mr. Anderson received his Bachelor of Arts at Colby College in Maine where he majored in Sociology, and then attended Golden Gate University School of Law where he specialized in Intellectual Property law. During law school, he was a member ACSEL (Association of Communications, Sports and Entertainment Law), clerked for a successful Intellectual Property and Entertainment law firm, and was named the top student in his Intellectual Property program upon graduating law school. Mr. Anderson began his legal career working for an international entertainment conglomerate as a law clerk and then worked as a clerk for a top Los Angeles based entertainment attorney.
Mr. Anderson then worked as an attorney for a top national Intellectual Property litigation firm on a high profile patent. From 2008 to 2012, Mr. Anderson worked as an associate and then partner at a Los Angeles based full service intellectual property firm where his practice involved all aspects of transactional intellectual property law including copyright, trademark, entertainment matters, as well as business entity formation and intellectual property litigation matters before the United States Patent and Trademark Office and the United States Federal Court in the Central District of California and the Northern District of California.
- Federal Court in the Central District of California
- Federal Court in the Northern District of California
- State Bar of California - Intellectual Property and Entertainment Section
- April 26, 2011: Introduction to Copyright, Trademark and Other Intellectual Property Law
- July 21, 2011: Introduction to Copyright, Trademark and Other Intellectual Property Law
- January 25, 2012: Continuing Legal Education - Intellectual Property Law
- May 31, 2012: Live Video Webcast CLE - Intellectual Property Basics
||09:00 AM – 12:15 PM
||10:00 AM – 01:15 PM
||11:00 AM – 02:15 PM
||12:00 PM – 03:15 PM
Approved CLE Credit Hours
CA 3, FL 3.5 (.5), NM 3 (.5), NV 3 (.5)
NJ 3.6 (.6), PA 3, SC 3
New York's Approved Jurisdiction policy applies to this seminar.
The number in parentheses denotes ethics hours.
Application will be made for any State not listed if a registered attendee is requesting credit in that State. See our Satisfaction Guaranteed
standard for credit and programing.