CLE
Kirby Drake
Kirby Drake Kirby Drake Law PLLC
Navigating Trademark Law Key Strategies for Legal Professionals
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Overview AI Webinar Summary
Navigating Trademark Law: Key Strategies for Legal Professionals

This course will provide an overview of trademarks, including how to select, register using the new USPTO Trademark Center, and maintain. The course will then discuss a number of recent court decisions relating to trademarks, including the risk of using another’s trademarks in ads, risks of comparing products in ads, failure to function, de minimis use, genericness, surnames, and translations.

Topics covered include:
Intellectual Property Law Practice
Agenda:
  • Trademark Overview
    • Understand how to define a trademark
    • Sliding scale of trademark strength
    • Why register a trademark with the USPTO

  • Trademark Process
    • Walk through the trademark process
    • Search, file, and maintain

  • Possible Pitfalls in the Trademark Process
    • Failure to adequately select an enforceable trademark
    • Failure to meet USPTO requirements
    • Failure to adhere to the “less is more” principle
    • Failure to maintain or even complete registration

  • Advertising Issues
    • Risk of using another’s trademarks in ads
    • Risks of comparing products in ads

  • Court Decisions
    • Court decisions relating to failure to function, de minimis use, genericness, surnames, and translations

  • Questions & Answers (as time permits)
Duration of this webinar: 60 minutes
Originally broadcast: June 05, 2025 10:00 AM PT
Webinar Highlights

This webinar is divided into section summaries, which you can scan for key points and then dive into the sections that interest you the most.

Introduction
Kirby Drake, a registered patent attorney, will discuss trademark law, providing insights for both new and experienced practitioners. The presentation will cover an overview of trademarks and specific decisions and applications in recent years. Kirby encourages questions throughout the presentation and begins with a quiz on recognizing trademarks.
Understanding Trademarks
Kirby explains the concept of trademarks, using examples like Instagram and Oreo to illustrate different types. Trademarks can be words, phrases, designs, images, or logos, and they serve as indicators of the source of goods or services. Unlike patents, trademarks can last indefinitely if continuously used in commerce. The strength of a trademark is crucial, with generic trademarks being the weakest and fanciful marks being the strongest. Descriptive trademarks require proof of long-term use to gain substantial protection, while suggestive and arbitrary marks offer more protection.
Trademark Registration Process
Kirby discusses the benefits of registering a trademark with the United States Patent and Trademark Office, including nationwide protection. Registration provides constructive notice and prevents later-filed applications for similar marks. The process involves searching, filing, and maintaining the trademark, with a focus on ensuring the mark identifies the goods or services. A knockout search is recommended before using a trademark to avoid infringement issues. The trademark ID manual helps determine the classification of goods and services for registration.
Trademark Application and Filing
The filing process involves choosing between a use-based or intent-to-use application, with specific requirements for each. The trademark center at uspto.gov provides resources for searching and applying for trademarks. Applicants must decide whether to protect words, logos, or both, and select the filing basis accordingly. The trademark ID manual assists in finding approved descriptions for goods and services, affecting filing fees. Once filed, an examining attorney reviews the application, and it may face opposition before registration is granted.
Maintaining Trademark Registration
Maintaining a trademark registration requires periodic renewals and keeping contact information updated. Failing to adhere to USPTO requirements or choosing a weak trademark can lead to wasted time and money. The "less is more" principle advises against overly complex trademark applications to avoid infringement loopholes. Consulting a trademark attorney can help navigate the registration and renewal process effectively. Common issues include selecting a strong trademark and meeting USPTO requirements for evidence submission.
False Advertising and Other Case Studies
Kirby discusses problems related to trademarks and false advertising. Cases like Enfamil and Danone highlight the risks of misleading claims in advertising. The Splenda lawsuit illustrates the importance of accurate product descriptions to avoid consumer confusion. Geographical limitations in trademark use are exemplified by the Ozark water case.

Please note this AI-generated summary provides a general overview of the webinar but may not capture all details, nuances, or the exact words of the speaker. For complete accuracy, please refer to the original webinar recording.

Continuing Legal Education (CLE) Credits

*CLE credit is only available to Justia Connect Pros. Not a Pro? Upgrade today>>

California CLE

Status: Approved

Credits: 1.00 General

Earn Credit Until: June 30, 2026

South Carolina CLE

Status: Approved

Credits: 1.00 General

Difficulty: All Levels

Earn Credit Until: December 31, 2025

North Carolina CLE

Status: Approved

Credits: 1.00 General

Earn Credit Until: February 28, 2026

Texas CLE

Status: Approved

Credits: 1.00 General

Earn Credit Until: May 31, 2026


This presentation is approved for one hour of General CLE credit in California, South Carolina (all levels), and North Carolina. This course has been approved for Minimum Continuing Legal Education credit by the State Bar of Texas Committee on MCLE in the amount of 1.00 credit hours.

Justia only reports attendance in jurisdictions in which a particular Justia CLE Webinar is officially accredited. Lawyers may need to self-submit their certificates for CLE credit in jurisdictions not listed above.

Note that CLE credit, including partial credit, cannot be earned outside of the relevant accreditation period. To earn credit for a course, a lawyer must watch the entire course within the relevant accreditation period. Lawyers who have viewed a presentation multiple times may not be able to claim credit in their jurisdiction more than once. Justia reserves the right, at its discretion, to grant an attendee partial or no credit, in accordance with viewing duration and other methods of verifying course completion.

At this time, Justia only offers CLE courses officially accredited in certain states. Lawyers may generate a generic attendance certificate to self-submit credit in their own jurisdiction, but Justia does not guarantee that lawyers will receive their desired CLE credit through the self-submission or reciprocity process.

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Speaker
Kirby Drake
Kirby Drake Founder
Kirby Drake Law PLLC

Kirby B. Drake is the Founder of Kirby Drake Law PLLC in Dallas, Texas. Since 2002, Ms. Drake has focused her efforts on helping clients successfully navigate their intellectual property (IP) challenges, whether those challenges relate to patents, trademarks, trade secrets, or copyrights. She has a special focus on the patent process, as she is a registered patent attorney. Ms. Drake is a former chair of the State Bar of Texas Intellectual Property (IP) Section as well as the Women and the Law (WAL) Section.

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