How to Be an Effective Trademark Practitioner Before the USPTO

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