September 11, 2020

Trademark Day 2020 - Track B Schedule

Access Course Materials 

Breakout Room Discussion Materials

Post Registration Audits

Updated Slides From Day 2

Trademark Day Roster

SCHEDULE B: Experienced Trademark Practitioners 


Wednesday, September 9

All times listed in Eastern Standard Time (ET)

12:00 pm – 12:15 pm | Welcome

  • Tracy L. Deutmeyer, Officer, Fredrikson & Byron, P.A., Des Moines, IA, Trademark Day Planning Committee Chair

12:15 pm – 1:15 pm | Making Effective Oral Arguments to the TTAB

Hear from TTAB judges on advance topics for ex parte and inter partes proceedings including how to create powerful and persuasive arguments in motions, final briefs, and oral arguments, and how to effectively build the record during the testimony period through depositions, declarations, Notice of Reliances, and more.  

Speakers:

  • Hon. Michael Adlin, Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO
  • Hon. Cindy Greenbaum, Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO

1:15 pm – 1:45 pm | BREAK

1:45 pm – 2:45 pm | Ask the USPTO: Q & A with the Experts

Get your questions answered by the experts. Hear from Managing Attorneys, a USPTO Technology Administrator and a Trademark Trial and Appeal Board Interlocutory Attorney on advanced examination, technology and TTAB topics, for questions submitted in advance.

Speakers:

  • Tanya Amos, Trademark Legal Administrator, Electronic Filing & Public Web Services, USPTO
  • Hellen Bryan-Johnson, Managing Attorney, USPTO
  • Catherine L. Tarcu, Senior Supervisory Attorney, USPTO
  • Michael Webster, Interlocutory Attorney, Trademark Trial and Appeal Board, USPTO       

2:45 pm – 3:15 pm | BREAK

3:15 pm – 4:15 pm | Failure-to-Function Refusals

You have seen and worried over the failure-to-function cases from the Trademark Trial and Appeal Board. Now hear from the USPTO itself on failure-to-function refusals during examination, including the latest rules and procedures in examining specimens. Hear the policy reasons behind the latest specimen examination procedures and how practitioners can prepare their clients and themselves for what’s ahead.

Speaker:

  • Tashia Bunch, Attorney Advisor – Legal Policy, Office of the Deputy Commissioner for Trademark Examination Policy, USPTO

4:15 pm – 4:30 pm | BREAK

4:30 pm – 5:30 pm | Breakout Room Discussions

  • Best Practices in U.S. Searching
    Ryan M. Fountain, Law Offices of Ryan M. Fountain, Mishawaka, IN
  • Best Practices and Tips in Client Counseling on Likelihood of Confusion
    John Heinbockel, Seyfarth Shaw, LLP, New York, NY
  • Alternative Fee Arrangements
    Matthew Asbell, Offit Kurman, P.A., New York, NY
  • Strategies for responding to ID refusals for overseas applicants
    Christopher J. Schulte, Merchant & Gould P.C., Minneapolis, MN
  • Life After Registration: Client Counseling in Trademark Renewals and Maintenance
    Eric Perrott, Gerben Law Firm, Washington, DC
  • Best Practices in US New Filings (Tailored to newer practitioners)
    Tracy L. Deutmeyer, Fredrikson & Byron, P.A., Des Moines, IA
  • TTAB Tips and Strategies
    Erik Pelton, Founder and Lead Attorney, Erik M. Pelton & Associates, PLLC, Falls Church, VA 

Thursday, September 10

All times listed in Eastern Standard Time (EST)

12:00 pm – 12:15 pm | Welcome

  • Steven R. Berk, Group Director, Trademark Law Offices, USPTO, Trademark Day Planning Committee Chair

12:15 pm-12:30 pm | Keynote

The role of a Senior Trademark Advisor in the Office of the Under Secretary and Director at the USPTO.

Speaker:

  • Kathleen Cooney-Porter, Senior Trademark Advisor, Office of the Under Secretary and Director, USPTO

12:30 pm – 1:15 pm | Post Registration Audits

Get an inside look as to how Post Registration Audits are conducted at the USPTO and learn how to prepare now for possible audit.

Speaker:

  • Montia Givens Pressey, Supervisory Senior Attorney, USPTO

1:15 pm – 1:30 pm | BREAK

1:30 pm – 2:00 pm | State of the Trademark Office

Update regarding the operations of the Trademark Office, including, recent statistics, current fillings, and more. 

Speaker:

  • David S. Gooder, Commissioner for Trademarks, USPTO

2:00 pm – 2:30 pm | State of the Trademark Trial and Appeal Board

Update regarding the current happenings and operations of the Trademark Trial and Appeal Board including current structure overview, recent fillings and more.

Speaker:

  • Hon. Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO

2:30 pm – 2:45 pm | BREAK

2:45 pm – 3:45 pm | Ethical Considerations for Trademark Practitioners

Listen to an analysis of ethical considerations in practitioners’ signing verifications or declarations; receive an update on certain proposed ethics rules for trademark practitioners, including those related to patterns of refused specimens; and hear about other ethical considerations for trademark practitioners.

Speaker:

  • William Covey, Deputy General Counsel and Director for the Office of Enrollment and Discipline, USPTO

3:15 pm – 4:00 pm | BREAK

4:00 pm – 5:30 pm | TTAB Hearing

Prior to the hearing, a preview will be provided regarding the background and details of the hearing case.     

Speaker:

  • Hon. Jonathan Hudis, Administrative Trademark Judge, Trademark Trial and Appeal Board, USPTO

Hearing Information: To Be Announced

Brining the USPTO to You: Topics & Tips for Experienced Trademark Practitioners Track (B)

  • ABA-IPL Section Member:            $50.00
  • ABA Member:                                    $75.00
  • Non-Member:                                   $100.00
  • Law Student:                                     $30.00 

MCLE Information 

For each “track” of the 2020 Virtual Trademark Days with the USPTO, the ABA will seek 7 hours of CLE credit in 60-minute states, and 8.4 hours of CLE credit for this program in 50-minute states, including 1.0 hours of CLE Ethics credit in 60-minute states and 1.2 hours of CLE Ethics credit in 50-minute states as needed. Credit hours are estimated and are subject to each state’s approval and credit rounding rules. Please visit the program website at https://ambar.org/ipltmday for program CLE details or visit www.americanbar.org/mcle for general information on CLE at the ABA.

Cancellation Policy 

Registrants who are unable to attend the Virtual Trademark Days with the USPTO events will receive a refund less a $25 administrative fee if a written cancellation is received 2 business days before the program -September 4, 2020 . Cancellation requests should be e-mailed to Abby Phillips, ABA-IPL Program Associate, at abby.phillips@americanbar.org.  No refunds will be granted after September 4, 2020. Vouchers for future programs will not be provided. Proxy substitutions are acceptable. The ABA reserves the right to cancel any program and assumes no responsibility for personal expenses.