How to Structure a Trademark Clearance Opinion Letter and Access Risk

(196 Ratings)

Produced on: October 22, 2018

Course Format On Demand Audio

Taught by

Categories:

Course Description

Time 60 minutes
Difficulty Beginner

Before any business adopts a trademark, the first step in the trademark process is trademark searching and clearance. In-house counsel and business owners rely on the trademark clearance search and most importantly, trademark clearance opinion to let them know whether the proposed mark will encounter problems with third parties or be costly to prosecute before the USPTO. It is critical that outside trademark counsel learns how to efficiently and effectively utilize full trademark search and make it an important part of its arsenal. After all, a company’s trademark is an extremely valuable asset, and investing in the wrong mark can be costly or worse, lead to rebranding, which is a death sentence for any business owner.  It is imperative that trademark counsel learn to effectively identify these risks to become an effective and trusted trademark counsel. Many attorneys are intimidated by a full trademark search; however, with proper training, the process can be easily conquered.

This program, taught by Stacey C. Kalamaras, Founding Partner of Kalamaras Law Office, LLC will take junior attorneys and anyone needing a refresher course through an actual full availability search. Further, attorneys will get an insider’s view into Ms. Kalamaras’ methodology and approach as she reviews an actual full search report, ending with the trademark clearance opinion letter she would have sent this fictitious client based on the actual search results used for the presentation.


Learning Objectives:

  1. Comprehend the structure and different sections of a full availability search report from one of the large vendors like CompuMark
  2. Assess risk when reviewing a full search report in preparing a written clearance opinion
  3. Identify clearance challenges both from a registrability and common law use perspective and how to overcome and/or minimize the risk to the client
  4. Examine the structure of a written trademark opinion letter and using the vendor’s online tools to make the process easier
  5. Protect client confidentiality when asserting the advice of counsel defense

Faculty

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.



Reviews

SC
Soraya C.

Excellent overall: great speaker and invaluable practical knowledge. Thanks so much.

DA
Donna A.

excellent program and materials

RZ
Rebecca Z.

Great presenter and presentation! Loved the hands-on approach of walking through a hypothetical mark search. Very practical. Thank you!

FC
Freya C.

Excellent. Very practical course.

PG
Paul G.

In 27 years of practicing, this presentation and especially the extensively prepared set of material IS by FAR the most useful, practical information I have ever seen/received, and in a form/way that it can be used a later time. Any/all nuances documented. Thank you so much for the extensive documentation and willingness to share. Outstanding clear verbal presentation leveraging the extensive written materials. Great job.

JO
Justin O.

I was impressed by the presenter's depth of knowledge and use of real-world examples. The inclusion of an actual TM report within the course was very helpful. One minor suggestion for a future program might be to include a little more information on the different classes of goods and how that interacts with the similarity/dissimilarity analysis.

BM
Bruce M.

Very practical presentation ... liked the walk-through of an actual search and opinion letter process. Very skillful presentation.

JS
Julie S.

Lawline CLEs are always great, but this one was one of the best I've taken. I liked that she used an actual hypothetical search. It really helped to understand the process. I would love to take another class with this CLE speaker.

SG
Savery G.

Excellent materials and practical advice. Great template letter provided and excellent way to assess risk of registerability.

JH
John H.

Excellent presentation on trademark clearance. The use of the CompuMark search was very helpful

SM
Sarah M.

Excellent, thank you for the example(s) in the documentation provided, very helpful.

LM
Lisa M.

Like that she included an example - made it more understandable for a newbie!

JM
John M.

excellent

SM
Stephanie M.

GREAT webinar.

NB
Nicholas B.

Above and beyond presenter!

MH
Mary Jacq H.

Well done.

JB
Jessica B.

Thorough class, lots of detail

GK
George K.

Nice course

TO
Tony O.

Very well organized presentation.

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$59

$ 59 Intellectual Property Law and Trademark Law In Stock

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