How to Be an Effective Trademark Practitioner Before the USPTO

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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

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Stacey C. Kalamaras

Kalamaras Law Office, LLC

Stacey C. Kalamaras is the founding partner of Kalamaras Law Office, LLC. Stacey brings extensive big law experience to the firm, having started her career in Washington, DC, close to the United States Patent and Trademark Office, and more recently to Chicago, Illinois where she worked for one the world’s largest law firms, managing global trademark portfolios in diverse industries around the world. What makes Stacey truly unique is that prior to becoming an attorney, she worked for more than a decade as a marketing and advertising executive in the consumer-packaged goods industry. This unusual combination of business and legal experience allows her to quickly establish herself as a trusted business adviser with her clients.

Stacey has significant experience with trademark and copyright clearance, registration of trademarks in more than 120 countries, assisting clients with global enforcement of their trademarks, including filing and defending opposition and cancellation proceedings before the U.S. Trademark Trial and Appeal Board and developing anti-counterfeiting strategies for her clients on a global basis. She also has experience with the enforcement of trademarks on the Internet under the Uniform Domain Name Dispute Resolution Policy. To assist clients in leveraging their trademarks, she has negotiated and drafted all types of licenses, sponsorship, joint promotion, influencer, and vendor agreements that affect brands. She assists clients with a range of copyright issues, including registration of copyrights and work-for-hire issues. To protect her clients’ brands, she counsels regarding the adoption of advertising slogans and claim substantiation, false advertising claims, rights of publicity claims, and sweepstakes and promotions programs.

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. She speaks frequently on counterfeit goods protection strategies.