June 9, 2010

All trademark practitioners eventually find themselves in an opposition or cancellation proceeding before the Trademark Trial and Appeal Board. Prepare now with a review of the latest rulings from the Board, and a discussion of essential practice pointers. Exchange litigation tactics and settlement strategies, and network, with your colleagues in the Peninsula and South Bay area. Join Carr & Ferrell trademark attorneys Mary Cabanski, Joi White, and Jefferson Scher for this illuminating session.

To register, click here, or contact Mary Cabanski for more information. Includes lunch. MCLE credit will be available.

About INTA

INTA is a not-for-profit membership association dedicated to the support and advancement of trademarks and related intellectual property as elements of fair and effective national and international commerce.  Please click here for further information.

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Presenter's Blog

(for full outline, contact Mary Cabanski at mcabanski@carrferrell.com)

1. What's New at the TTAB
   1. Key Legal Developments since January 2009 — To be revealed!
   2. Key Procedural Developments since January 2009 — To be revealed!
2. Twenty (plus) Dumb Mistakes To Avoid at the TTAB — Join us for the full details!
   1. Pre-filing Mistakes
      1. Not Checking Your Armor before Going into Battle
         1. Neglecting to check your registrations for vulnerability
         2. Failing to cure Declaration errors to avoid fraud counterclaims
   2. Opposition Extension Requests
      1. Requesting an extension of time to oppose for the wrong party
      2. Filing an extension request on paper for a Madrid Protocol extension
      3. Seeking an extension beyond the maximum 180 day period
   3. Notice of Opposition or Petition for Cancellation
      1. Forgetting to serve the complaint
      2. Serving the wrong party
      3. Serving the complaint via mail, but omitting a copy of the proof of service from the TTAB filing. (TBMP §§ 2.101a, b, d4; TBMP §§ 2.11a, b, c4)
      4. Challenging a registration more than five years old on grounds not permitted under Section 14(3) of the Lanham Act
      5. Praying for monetary or injunctive relief (this prayer cannot be answered!)
   4. Filing an Answer or Requesting an Extension
      1. Failing to consider the non-extendable deadline to hold the initial conference when deciding whether to Answer or extend
      2. Failing to include affirmative defenses for Madrid cases: you cannot amend your pleadings!
      3. Failing to include a mandatory counterclaim
   5. Initial Disclosures and Discovery
      1. Failure to Meet the Discovery Conference Deadline
      2. Serving discovery requests before making initial disclosures
      3. Serving more than 75 interrogatories counting subparts
      4. Failing to incorporate general objections into individual discovery responses
      5. Failing to file Motion to Compel before the opening of the first testimony period
      6. Failing to make good faith efforts to resolve discovery disputes before filing a motion to compel
   6. Motions for Summary Judgment
      1. Filing a motion that requires the TTAB to resolve contested issues of fact
      2. Filing a motion before the party has made its initial disclosures (except in cases involving claim or issue preclusion or lack of jurisdiction)
      3. Using the procedure to obtain a "quick" resolution of the case
   7. Expert Disclosures (§ 2.120(a)(2))
      1. Withholding experts from discovery responses
      2. Assuming you can retain a new expert after the disclosure deadline
   8. Pretrial Disclosures (§ 2.121(e))
      1. Failing to disclose specific information about witnesses on whose testimony a party wishes to rely
      2. Missing the witness disclosure deadline
      3. Missing the opportunity for challenges based on lack of pretrial disclosure
   9. Testimony Depositions
      1. Failure by the witness's counsel to effectively authenticate evidence
      2. Failure by opposing counsel to make timely objections during deposition