International and Domestic Trademark Practice Before the USPTO

Come learn from the USPTO during a full-day of programs on international and domestic Trademark practices before the USPTO.  Topics will include:

  • Overview of the Madrid system
  • Filing an International Application Through the USPTO
  • USPTO as a Designated Contracting Party (DCP) – 66(a)/Madrid Applications
  • Brief overview of upcoming and potential amendments to the Madrid Protocol rules
  • Best Practices: Petitions to the Director, Letters of Protest, and Post Publication Amendments
  • Tour of the Trademark Electronic Application System (TEAS) and the USPTO Website

This event is intended for Trademark attorneys, paralegals and practitioners who would like to know more about the Madrid Protocol and domestic trademark practice before the USPTO.

Four (4) hours of MCLE credit is offered for this event.

The event is free and open to the public.  Please register here by June 7, 2017 (link is external).

Please note that the Silicon Valley USPTO is a federal facility.  Attendees are required to present a valid form of government-issued identification (driver license or passport) and may be subject to screening to gain access.


Detailed Agenda:

International and Domestic Trademark Practice Before the USPTO
Thursday, June 8, 2017

8:30-9:00       Registration

9:00-9:10       Welcome and Introduction of Speakers

9:10-9:30       Madrid System Overview [Speaker:  Alan Datri, IPDatri LLC]

    A brief, high-level overview of the basic features of the Madrid System with an emphasis on practical tips for navigating the system.

9:30-10:45     USPTO as Office of Origin – Filing an International Application through the USPTO [Speaker:  Karen Strzyz, USPTO]

    A detailed presentation and discussion regarding the preparation and filing of an international application. The discussion will provide information on the USPTO review process for the certification of the international application, procedures to follow if the international application is denied, the role of the International Bureau (IB) in reviewing the international application, and issuing an international registration.  Further, the discussion will cover the roles and procedures of the USPTO and the IB if a notice of irregularity issues with regard to the listing of goods/services.  This segment will also cover ceasing of effect, and the procedures for changing, correcting and renewing the international registration.

10:45-11:00   Break

11:00-12:15   USPTO as a Designated Contracting Party (DCP) – 66(a)/Madrid Applications [Speaker:  Karen Strzyz, USPTO]

    A comprehensive overview of a designation to the United States (66(a)/Madrid application).  Topics to be covered include: the receipt and processing of the designation, examination issues, restriction and correction procedures, maintenance requirements for a registered extension of protection, and the timing of notifications between the USPTO and the International Bureau (IB).  This segment will also provide some basic tips for avoiding provisional refusals.  

12:15-12:45   Amendments to the Common Regulations, Administrative Instructions and Schedule of Fees (2016-2019 and beyond) [Speaker:  Alan Datri, IPDatri LLC]

    The Working Group of the Madrid Union Assembly, the governing body of the Madrid System, is in the midst of executing the Union’s roadmap for the future, the scope of which will cover many concerns that have been raised by users, including holders, practitioners and Offices.  Topics include continued processing after a deadline, the overhaul of replacement, the introduction of division and merger, redefining the examination of limitations, standard refusal periods, benchmarking implementation by Offices, consistency in classification practice, examination manuals and more.  Some have been implemented, others are in the pipeline and still others will soon be under discussion.  

12:45-1:00     Questions

1:00-2:30       Lunch Break

2:30-3:30       Best Practices: Petitions to the Director, Letters of Protest, and Post Publication Amendments [Speaker:  Colleen Kearney, USPTO]

    A comprehensive discussion of petitionable issues, types of petitions, the Technology Evolution Pilot, relevant notices of proposed rulemaking, petition fees, and petition filing tips related to timeliness and due diligence.  This segment will also cover the purpose and intent of Letters of Protest, and cover appropriate Letter of Protest subject matter, procedures for filing and appealing denials of Letters of Protest, and the relevant legal standards for each.  Further, this segment will address post-publication amendments and the subject matter, republication, timing, and jurisdictional issues related thereto.

3:30-4:30       Tour of the Trademark Electronic Application System (TEAS) and the USPTO Website [Speaker:  Colleen Kearney, USPTO]

    An in-depth breakdown of TEAS forms, including filing requirements and fees associated with TEAS Regular, TEAS RF and TEAS Plus initial applications.  This segment will also cover TEAS filing practice tips and guidance for resolving filing errors.  The presentation will also provide a broad overview of the USPTO website and its features, with emphasis on the recently launched MYUSPTO homepage. MYUSPTO is a new landing site for managing intellectual property portfolios.  The site also allows for accessing and managing public facing systems and storefronts, and for hosting personalized multi-functional widgets including a trademark application docket widget and a trademark Official Gazette monitoring widget.

4:30-5:00       Questions


About Our Speakers:

Karen Strzyz:    Ms. Strzyz is an attorney in the Office of the Deputy Commissioner and is the primary legal advisor to the Madrid Processing Unit at the USPTO.  Ms. Strzyz ensures that the United States is in compliance with the treaty obligations under the Madrid Protocol, and is a frequent speaker on Madrid practice and procedure.  She also decides Petitions to the Director and Letters of Protest. Ms. Strzyz joined the USPTO as an examining attorney in 1996, joined operations management in 2003 as a Senior Attorney Advisor, and in 2007 was promoted to Managing Attorney.  In 2012, Ms. Strzyz joined the Office of the Deputy Commissioner.  She is a graduate of State University of New York at Buffalo and Western New England College School of Law.   

Colleen Kearney: Ms. Kearney is an attorney in the Office of the Deputy Commissioner. Ms. Kearney handles Petitions to the Director, Letters of Protest, congressional inquiries, and is the primary legal advisor to the Electronic Filing & Public Web Services group, which includes providing legal guidance on all aspects of electronic prosecution.  Prior to joining the Deputy Commissioner’s staff, she was a trademark examining attorney.  Ms. Kearney came to the USPTO in 2005 from the United States Copyright Office, where she focused on visual and performing arts copyright issues. She is a graduate of American University and University of Baltimore School of Law.

Alan Datri:  Alan Datri is an attorney/consultant who helps right holders, legal practitioners, IP offices and organizations achieve their objectives or those of their clients, constituents or members, as the case may be, with respect to the adoption, implementation, administration, legal development and use of the Madrid System for the International Registration of Marks and the Hague System for the International Registration of Industrial Designs.  He draws on some 28 years of experience working at the United States Patent and Trademark Office (USPTO), where he held positions in the examining operation, Office of the Commissioner for Trademarks and the Trademark Trial and Appeal Board, and later at the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations located in Geneva, Switzerland, that administers the aforementioned global protection systems in cooperation with IP offices around the world.