JESSIE N. ROBERTS, J.D.
529 Clear Spring Rd.
Great Falls, VA 22066
Phone: (703) 421-4080
Fax: (703) 421-3140
E-mail:
EMPLOYMENT HISTORY
3/11-present
Independent Contractor (Delos, LLC – Sole owner)
Law firm specializing in consultation in the field of trademark identification and classification pursuant to the Nice Agreement and general US trademark prosecution practice, training in National Trademark office establishment and procedures, and Madrid Protocol procedures and processes. Contractor with the World Intellectual Property Organization to provide value added analyses for 200 specific entries of goods and services in the Nice Agreement Alphabetical List to be included in revised on-line platform for the Nice Agreement being implemented in 2012. Ms. Roberts currently chairs the AIPLA Trademark Relations with the USPTO Committee.
2/94 – 3/11
Administrator for Trademark Identifications, Classification and Practice
United States Patent and Trademark Office (USPTO)
Office of the Commissioner for Trademarks
Designated as USPTO expert in trademark identification and classification pursuant to the Nice Agreement. Responsible for maintenance and updating of USPTO Acceptable Identification of Goods and Services Manual. Managed the USPTO group of identification and classification specialists in administering and reviewing trademark IDs. Responsible for review and approval of all Identifications in the Official Gazette of the Trademark office. Main contact in the USPTO for both administrative and substantive matters concerning the Trilateral Identification and Classification project that establishes language and classification for goods and services that are accepted in the USPTO, the Office of Harmonization for the Internal Market (OHIM) and the Japanese Patent Office (JPO). Represented the USPTO at Nice Agreement meetings in Geneva, Switzerland. Provided training for National Trademark Offices in trademark procedures and processes. Frequent speaker on behalf of the USPTO on trademark matters.
Until 2010, solely responsible for review Letters of Protest filed by third parties to bring information to the attention of the USPTO that would aid in the ex parte examination of trademark applications. Handled upward of 600 Letters of Protest per year. In a reorganization of the Office of the Commissioner for Trademarks in 2010, Letter of Protest review was transferred to a group of staff attorneys in the Office of the Commissioner due to the creation of a section dealing with trademark identification and classification pursuant to the Nice Agreement. Was instrumental in the creation of that section and served as its manager until retirement in 2011.
2/92 - 2/94,
Classification Officer
World Intellectual Property Organization
Responsible for administration of the Nice Agreement (Trademark Classification), the Vienna Agreement (figurative mark classification) and the Locarno Agreement (design classification). Served as Secretariat for international meetings concerning Agreements. Managed translation of classification lists into various languages. Responded in French or English to classification inquiries from national offices and private practitioners. Trained Indian trademark office in use of Vienna Agreement.
1/87 - 2/92
Administrator for Trademark Identifications, Classification and Practice
United States Patent and Trademark Office
See responsibility description above – 2/94-3/11
12/85-11/87
Trademark Lead Attorney
United States Patent and Trademark Office
Responsible for training new examining attorneys and handling difficult and complex trademark applications. Served as expert attorney in assigned law offices
1/81-12/85
Trademark Examining Attorney
United States Patent and Trademark Office
Examined trademark applications, prosecuted appeals before the Trademark Trial and Appeal Board.
EDUCATION
JD Vermont Law School, South Royalton, VT 1980
MFA Brandeis University, Waltham, MA 1974
BA Brandeis University, Waltham, MA 1972
ADDITIONAL INFORMATION
Author of International Trademark Classification: A Guide to the Nice Agreement, Oxford University Press, 1st, 2nd and 3rd Editions – Fouth edition to be released January, 2012.
1986 George Mason University School of Law, Arlington, VA, Adjunct Professor for Unfair Trade Practices.
1993 ILO Language School, Geneva Switzerland Certification of successful completion of French Level 3
PROFESSIONAL ACCOMPLISHMENTS AND AFFILIATIONS
Member, Virginia Bar Association
Member, International Trademark Association (INTA)
Member, American Intellectual Property Law Association
Chair, AIPLA Trademark Relations with the USPTO Committee
Speaking engagements
Trademark Practitioners' Seminar, Sunnyvale, CA, 1994
Various seminars and workshops organized by the International Trademark Organization, DC Bar Association and numerous other Bar and professional trademark associations
Patent and Trademark Depository Librarians Association Annual Meetings
2004 - Trained Belize Intellectual Property Office (BELIPO) on the Nice and Vienna Agreements. Conducted seminar on Nice Agreement for private practitioners in Belize.
2005 & 2006 - Participated in French-speaking panel discussion for La Compagnie Nationale des Conseils en Propriete Industrielle (CNCPI). Provided information on trademark registration practices and procedures in the USPTO.
2014 & 2015 – Participated in AIPLA Boot Camp. Gave Overview of the TTAB and Concurrent Use Lectures
Publications And Awards
Author of International Trademark Classification: A Guide to the Nice Agreement, 4th Ed.,published by Oxford Unitersity Press (2012)
U.S. Government Bronze Medal, 1990 and 2006
U.S. Dept. of Commerce Distinguished Career Service Award, 2006
Editor of Acceptable Identifications of Goods and Services Manual
(available as on-line publication at the USPTO website www.uspto.gov)
"Classification of Services Under the International (Nice) Agreement"
The Trademark Reporter, Vol. 82, No. 1, 1992
"Tips from the Trademark Examining Operation"
The Trademark Reporter, Vol. 80, No. 5, 1990
AIPLA (American Intellectual Property Lawyers Assoc.) Achievement Award, 1987
Other
CEO and Chairperson of Board of Directors of Crystal City Working Parents, Inc.
Created a non-profit Cooperative Child Care Center, sponsored by U.S. Congressman Frank Wolf. Testified before House Subcommittee on work-site child care.