On Demand Audio

How to Structure a Trademark Clearance Opinion Letter and Access Risk

(949 reviews)

Produced on October 22, 2018

$ 59 Intellectual Property and Trademark In Stock
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Course Information

Time 1h
Difficulty Beginner
Topics covered in this course: Intellectual Property Trademark

Course Description

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

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

RZ
Ronald J. Z.

Slides were concise, targeted, and easily comprehended.

MG
Molly G.

So helpful!

DS
Diren S.

A handy blend of overview and detail. Highly recommended.

AF
Alexandra F.

Excellent

JM
Jonathan M.

One of the best courses I have taken

LW
Laura W.

This was great!

DN
David N.

Good presenter

RD
Richard D.

I have to do 33 of these by the end of January. Frankly, I do other things while the video drones on in the background. The presenter actually made me stop and pay attention.

TI
Thomas I.

Excellent accompanying written materials.

RM
Richard M.

great instructor. knowledgeable and engaging.

DB
David B.

Extremely clear and practical presentation. I wish more seminars were as good!

KS
Kira S.

Well done and appreciate the supplemental materials and exemplar

GS
Gregory S.

It's hard to clearly express how to evaluate a TM search in an hour, but Stacy did an excellent job of it.

KL
Kirk L.

Excellent and informative presentation.

SJ
Stuart I. J.

Thank you! It was informative !

CA
Carolyne A.

If I could give her all 5's I would. Best CLE course I have ever taken. So much practical information, both on the process, the ethics, recommendations, etc. Written materials were excellent.

DT
David T.

Great program!

LM
Logan M.

Great practical information and well organized presentation!

KR
Kay R.

well structured and comprehensive

MV
Mark V.

One of the best Trademark classes I've taken. Very knowledgable speaker & very useful information.

TW
Thomas W.

This was the best, clearest and most valuable CLE program I have ever experienced

MG
Mark G.

I like that the instructor included an actual opinion letter.

SB
Samantha B.

This was the best Trademark seminar I have taken. As a startup in this area, I really appreciate your frank and real opinions and examples.

JG
Jeffrey G.

Outstanding. I wish all CLE courses were this methodical and instructive.

AP
Ariel P.

really on point, and very useful analysis and advice.

EC
Evi C.

Excellent!

JC
Jay C.

It was very helpful to be provided with an actual search report.

HS
Hannah S.

thanks!

VS
Victoria S.

Presenter was fantastic.

ST
Steven T.

Excellent presentation and materials!

RH
Robert H.

excellent presentation

OZ
Olga Z.

one of the most useful trademark courses I have attended.

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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