The Innovation Firm

When

September 14, 2016
1:00 - 2:00 p.m. EDT

WEBCAST RECORDING: Using Coexistence Agreements to Secure and Confirm Trademark Rights

By: John L. DuPré and Christopher K. Albert

 

Did Bay State Brewing change the status quo for Trademark Owners?

 

Legally Live WebcastTrademark applications can be rejected when an Examiner discovers a confusingly similar registered mark.  For years, applicants have entered into coexistence agreements with the owners of registered marks, in which the parties typically recognize each others' right to use and/or register similar marks.  Historically the United States Patent and Trademark Office (USPTO) has withdrawn rejections when presented with evidence of a coexistence agreement.  A recent precedential decision from the Trademark Trial and Appeal Board (TTAB) suggests that the USPTO may have now changed its approach to these agreements and is likely to scrutinize coexistence agreements more closely.  Coexistence agreements can present a number of risks to trademark owners.  They should be drafted carefully to ensure that they protect a company’s plans for use of the mark and to ensure they eliminate a likelihood of confusion between the applicant’s mark and the registered mark.

Our panel will discuss:

  • Recent case law developments pertaining to trademark coexistence agreements
  • The downsides and risks of coexistence agreements
  • Strategies for negotiating coexistence agreements
  • Considerations for ensuring your coexistence agreement will successfully overcome a likelihood of confusion rejection
  • The important differences between coexistence agreements, concurrent use agreements, and trademark licenses

 

John DuPre  

For over 35 years, John has practiced primarily in the areas of intellectual property litigation and trademark prosecution. Since joining the firm in 1986, he has been involved in patent litigation, patent interferences, International Trade Commission proceedings, trademark and trade dress litigation, trademark oppositions and cancellation proceedings, and copyright litigation. He also has experience in licensing matters and IP counseling.

In addition, John’s legal expertise also includes IP portfolio strategy and counseling, due diligence studies and opinions, audits, trade secret advice, alternative dispute resolution, nondisclosure agreements, technology transfer, consulting, employment, and community interest agreements.  More...

     
Chris Albert  

Christopher practices in the areas of chemistry, clean energy, and medical devices, and he has experience in all aspects of patent practice.

Christopher has significant litigation experience as a member of a jury trial team and in Hatch-Waxman ANDA disputes. He has drafted and prosecuted applications in the fields of polymer chemistry, membranes and filtration technology, materials chemistry, and medical devices. His experience includes significant prosecution within the framework of the Patent Cooperation Treaty. Christopher also has experience providing invalidity and non-infringement opinions and conducting freedom-to-operate analyses.  More...

 

Overview

When

September 14, 2016
1:00 - 2:00 p.m. EDT

By: John L. DuPré and Christopher K. Albert

 

Did Bay State Brewing change the status quo for Trademark Owners?

 

Legally Live WebcastTrademark applications can be rejected when an Examiner discovers a confusingly similar registered mark.  For years, applicants have entered into coexistence agreements with the owners of registered marks, in which the parties typically recognize each others' right to use and/or register similar marks.  Historically the United States Patent and Trademark Office (USPTO) has withdrawn rejections when presented with evidence of a coexistence agreement.  A recent precedential decision from the Trademark Trial and Appeal Board (TTAB) suggests that the USPTO may have now changed its approach to these agreements and is likely to scrutinize coexistence agreements more closely.  Coexistence agreements can present a number of risks to trademark owners.  They should be drafted carefully to ensure that they protect a company’s plans for use of the mark and to ensure they eliminate a likelihood of confusion between the applicant’s mark and the registered mark.

Our panel will discuss:

  • Recent case law developments pertaining to trademark coexistence agreements
  • The downsides and risks of coexistence agreements
  • Strategies for negotiating coexistence agreements
  • Considerations for ensuring your coexistence agreement will successfully overcome a likelihood of confusion rejection
  • The important differences between coexistence agreements, concurrent use agreements, and trademark licenses

 

Presenter Bios
John DuPre  

For over 35 years, John has practiced primarily in the areas of intellectual property litigation and trademark prosecution. Since joining the firm in 1986, he has been involved in patent litigation, patent interferences, International Trade Commission proceedings, trademark and trade dress litigation, trademark oppositions and cancellation proceedings, and copyright litigation. He also has experience in licensing matters and IP counseling.

In addition, John’s legal expertise also includes IP portfolio strategy and counseling, due diligence studies and opinions, audits, trade secret advice, alternative dispute resolution, nondisclosure agreements, technology transfer, consulting, employment, and community interest agreements.  More...

     
Chris Albert  

Christopher practices in the areas of chemistry, clean energy, and medical devices, and he has experience in all aspects of patent practice.

Christopher has significant litigation experience as a member of a jury trial team and in Hatch-Waxman ANDA disputes. He has drafted and prosecuted applications in the fields of polymer chemistry, membranes and filtration technology, materials chemistry, and medical devices. His experience includes significant prosecution within the framework of the Patent Cooperation Treaty. Christopher also has experience providing invalidity and non-infringement opinions and conducting freedom-to-operate analyses.  More...

 

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