On Demand

How to Be an Effective Trademark Practitioner Before the USPTO


Created on October 25, 2019





Do you want to learn how to file a trademark application at the USPTO or do you have a desire to brush up on your trademark prosecution skills? If so, then this program is for you! Trademark law is an incredibly nuanced area of practice and without a proper grounding in the Trademark Rules of Practice, practitioners who are just starting out or who don't regularly practice before the Trademark Office may not know where to begin. In this high-level overview, we'll explore the key rules you need to know to get a basic understanding and grounding of the trademark application process from application through to registration to ensure your clients are effectively represented.

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

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