On Demand Audio

How to Be an Effective Trademark Practitioner Before the USPTO

(240 reviews)

Produced on October 25, 2019

$ 89 Intellectual Property and Trademark In Stock
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Course Information

Time 60 minutes
Difficulty Beginner

Course Description

In the United States, there is no competency test an attorney has to take to qualify him or her to practice trademark law before the USPTO. Other jurisdictions like the EU, Canada, and Argentina have such requirements to be qualified to practice trademark law before their Trademark Offices. In the United States, any attorney can trademark law before the USPTO (regardless of his or her knowledge of the area) and this often results in inefficiencies and backlogs for prosecuting applications and more importantly, results in financial inefficiencies for clients who do not always receive the best strategic (or proper) trademark advice.  

This program, taught by experienced trademark attorney Stacey C. Kalamaras, Founding Partner of Kalamaras Law Office, LLC, will instruct new attorneys and those not intimately familiar with trademark law on how to become better trademark practitioners before the USPTO. In particular, this course will focus on key aspects of the Trademark Manual of Examining Procedure throughout the lifecycle of a trademark application as well as best practices and strategies when representing clients and working with Examiners and the USPTO. Further, attorneys will get an insiders’ view into Ms. Kalamaras’ approach and guidance to some of the most common substantive refusals that can arise during the examination process.


Learning Objectives:

  1. Identify how to appropriately draft a trademark application in compliance with the Trademark Rules of Practice, including best practices to improve USPTO and client efficiency
  2. Examine the different types of Office Actions and how to appropriately respond to a substantive refusal including the strategic options to best serve your client
  3. Review how to properly maintain and renew your client’s mark and strategies to communicate with your client to ensure success during that process
  4. Discuss new developments in trademark law outlined in USPTO Examination Guidelines
  5. Develop best practices and practical tips to ensure your clients’ expectations are met and they are well-served by your representation

Credit Information

After completing this course, Lawline will report your attendance information to {{ accredMasterState.state.name }}. Please ensure your license number is filled out in your profile to ensure timely reporting. For more information, see our {{ accredMasterState.state.name }} CLE Requirements page . After completing this course, {{ accredMasterState.state.name }} attorneys self-report their attendance and CLE compliance. For more information on how to report your CLE courses, see our {{ accredMasterState.state.name }} CLE Requirements FAQ .

Faculty

Stacey C. Kalamaras

Kalamaras Law Office, LLC

Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC and is a seasoned trademark, copyright, and advertising lawyer with a combination of Big Law, in-house, and prior business management experience. Stacey has extensive experience managing large, global trademark portfolios in more than 150 countries for clients in diverse industries. Her firm’s focus is creatively assisting small and medium sized businesses navigate the legal landscape to create distinctive brands and differentiate their businesses in an ever-changing marketplace. Stacey regularly counsels clients on the clearance and adoption of new trademarks, develops strategic protection and enforcement programs through her extensive experience with trademark opposition/cancellation proceedings and anti-counterfeiting strategies, and grows portfolios by conducting IP due diligence matters. In addition, she is well-versed in drafting and negotiating licensing and other IP/advertising agreements necessary to protect, enforce, and commercialize brands.

Before going to law school, she was a brand manager and advertising director in the consumer-packaged goods industry, which gives her valuable insight into her clients’ businesses on a practical level.

Stacey has been recognized by her peers as a Super Lawyer® for her outstanding knowledge and service in intellectual property law, a recognition and honor given to just 5% of the lawyers in Illinois. Since starting her law firm, she has educated over 1,800 lawyers on three continents on various IP topics, including: IP Law for the Corporate Lawyer, Anti-Counterfeiting Strategies, How to Conduct a Trademark Search, How to Respond to IP Infringement Through Online Platforms, and How to Be an Effective Practitioner at the USPTO. 

In February 2020, Stacey realized a long awaited passion project and launched Trademarkabilities™, an online trademark academy for lawyers, with a single mission: to prepare lawyers to become efficient and effective trademark practitioners before the USPTO and be practice ready to help their clients.

Stacey is a current member of International Trademark Association (INTA) and a past member of the editorial subcommittee of The Trademark Reporter, a publication of INTA. In her spare time, she loves to play and watch tennis.



Reviews

MD
Michael D.

good information regarding continued use affidavit requirement

GL
Grazia L.

This course was superb. I've practiced trademark law for over 10 years and took a break for a year before going back to work. I took this course as a refresher and I have to say that it is one of the best CLE programs I have ever listened to. Very accurate and valuable information and I also enjoyed the updates.

MA
Melissa A.

Excellent CLE. Presenter had lots of great tips, moved things along, and was very knowledgeable. Highly recommend.

DJ
Dennis J.

Instructor was very knowledgeable and very thorough. Provided useful and practical tips for improvement.

CR
Charlnette R.

This speaker was fantastic! One of the best!

PV
Peter V.

Great stuff

JM
Jason M.

I found this course insightful and helpful in keeping my current knowledge up to date. I think its useful for both new and old TM attorneys alike.

BB
Bryan B.

As an experienced trademark practitioner, I found this video very useful.

KB
Kevin B.

Fantastic speaker. Would love to see more courses from her.

TT
Thomas T.

Very good lecture! I’ve been practicing for a while and I leaned a lot! Thank you!

JH
John H.

very good practical, common sense, informative presentation for trademark practice

JK
joshua k.

Excellent course. Very helpful with specific information

MM
Matthew M.

Great presentation. Good for an attorney who already does some trademark work.

JA
James A.

Very clear and well-organized. Packed a lot of useful information into one hour without seeming too dense or too hurried.

LS
Lidia S.

Amazing course, well delivered, very helpful

RB
Rashaad B.

very informative, providing detail and broad over view.

JD
John D.

Very good overview of general trademark practice. The faculty member was very good at presenting the information.

LJ
Lawrence J.

very easy to follow = well organized

EB
Earl B.

one of the best, if not THE best CLE courses I've ever taken!

GD
Geoffrey D.

The practical point regarding assignments of 1(b) applications and signatures was helpful.

JJ
James J.

Good practical tips and advice

JF
John F.

Super job!

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