On Demand
Audio
Trademark Selection & Clearance 101
Produced on February 15, 2017
Course Information
Course Description
Trademarks, services marks and logos for a company’s brands or products can be among the most valuable of its intellectual property assets. Weak marks that are too descriptive of the nature of the goods or services provided, or marks that are already used and/or registered by third parties do more harm than good. Either of these situations can lead to wasted marketing dollars and lost customer goodwill when the company finds out the mark cannot be registered, or is already being used by a third party with similar goods or services.
It is crucial to select a trademark that is eligible for the strongest protection, and associated with the least amount of risk in the marketplace. To create a strong intellectual property foundation, the company must conduct a full clearance search to determine what marks are currently in the marketplace, and whether the mark is registerable or usable. This invaluable step is too often overlooked or skipped as non-cost effective.
This course, presented by Randy M. Friedberg, a partner with White and Williams, LLP, reviews the art and science of the numerous factors to consider when determining the strength of a trademark and evaluating the chances of receiving a registration. The course also offers practical steps on how to best conduct clearance searches and evaluate the likelihood of confusion with other marks in the marketplace.
Learning Objectives:
- Grasp the fundamentals of what a trademark is and how it is used
- Become familiar with the trademark strength spectrum and how to select the best possible trademark
- Understand how to engage in the search process, both in-house and via a commercial company
- Learn how to assess threats to registration and use through analyzing a clearance search
Credit Information
Faculty
Randy Friedberg
White and Williams, LLP
Randy Friedberg has 30 years of experience in counseling clients, with particular focus on the protection, licensing and enforcement of intellectual property rights. His practice encompasses trademark and copyright law, unfair competition, trade secrets, advertising law, internet law and entertainment law, as well as general corporate and litigation matters.
Randy represents clients in a variety of industries, including consumer goods and services, computer software and hardware, pharmaceutical and biomedical products, media and entertainment. He also represents the energy and financial services sectors for corporate work and litigation before an array of state and federal courts, in the United States Patent and Trademark Office and before the Trademark Trial and Appeal Board.
Randy’s experience has led to him to become a source for the news media. He has been quoted in a variety of different publications in the area of IP law. He is also asked to speak and present at business-related events. Randy has also served as a Judge for the Cardozo Entertainment Moot Court Competition.
Randy is the author of “Navigating Intellectual Property Disputes,” an authoritative, insider's perspective on assisting clients with managing IP assets and litigating disputes. He was on the editorial subcommittee of The Trademark Reporter, a publication of the International Trademark Association.
REPRESENTATIVE MATTERS
- Represented a famous clothing designer in trademark work, a series of licenses and a “bet the company” arbitration
- General counsel to one of the largest pet toy companies in the country; engaged in trademark, copyright, and patent registration, licensing and litigation, as well as Proposition 65 litigation and general corporate matters
- Represented a large private label manufacturer and distributor of cosmetics for trademark, copyright, Internet and general commercial matters
- Represented numerous licensors and licensees in negotiating and drafting significant license agreements in a wide range of industries, including clothing, music, software and cosmetics
RECOGNITION & INVOLVEMENT
Randy has been selected for inclusion in ”Super Lawyers” in the New York Metro Region in a survey of his peers by Law & Politics magazine for the years 2007 through 2018.
Reviews
One of the best I have watched so far!
Informative overview
Thanks!
I like all courses of this speaker!
I've loved every one of this guy's presentations. Outstanding!
Excellent.
Thanks
Nice job as always!!!
Great presentation
Very interesting.
This presenter is very good, although the presentation is probably over-packed with information.
Met expectations.
Very informative!
Great overview of trademark basics, by an excellent speaker.
Very good information on descriptive and suggestive types of trademarks.
Great presentation. Lots of practical, useful information.
Good program and good delivery
Excellent materials and presentation of the fundamentals of TM's. Thank you.
Excellent
An excellent introduction to trademarks. Every general practitioner should take an hour and listen to this presentation.
So helpful!
Great
Good presentation
Randy never disappoints! Great substance. Another one that can be watched 2 or 3 times ... highly recommended for anyone looking for TM basics...
Excellent overview - very helpful. Thank you!
Excellent presentation.
best course taken thus far in the series
Best presenter so far. Made a dry subject matter interesting
Great class!
Interesting topic ... excellent Instructor. Thank you,
Very good materials
He knows his subject!
Much improved from audio-only format of earlier years. Excellent!
excellent informative course
Solid information from a solid expert in the field.
Highly recommended. Presenter has good energy, engaging delivery style.
Program is loaded with practical and important information compactly packaged in a one-hour format making for an efficient and productive expenditure of this lawyer’s time. Clearly, the topic is not beyond this talented speaker’s ken.