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Responding to Trademark Office Actions: Strategies to Overcome Refusals and Successfully Persuade the Examiner

(162 reviews)

Produced on December 04, 2020

$ 89 Intellectual Property and Trademark In Stock
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Course Information

Time 1h 3m
Difficulty Beginner
Topics covered in this course: Intellectual Property Trademark

Course Description

Receiving an Office Action is perhaps the most frustrating part of the trademark prosecution process. What’s the best way to proceed when the Office Action contains a substantive refusal of registration? Is your client’s mark doomed? How should you handle both your client’s expectations and persuading the Examiner that this application should be approved for publication? 

This program, taught by experienced trademark attorney Stacey C. Kalamaras, Founding Partner of Kalamaras Law Office, LLC in Chicago, Illinois, will give you the best strategies and tips you need to handle Office Actions with ease. This course will focus on how you can counsel your clients ahead of time to avoid receiving the most serious Office Actions and strategies, and tips and arguments to overcome any type of Office Action. We’ll look at the most common types of Office Actions and some real-world examples for each type and how the refusal was or could have been overcome. Attorneys will walk away with practical guidance they can implement in their own practices immediately. 

Learning Objectives:

  1. Explore how to counsel clients to avoid substantive refusals of registration

  2. Discuss how to handle client expectations when receiving and responding to Office Actions

  3. Provide strategic tips to overcome key Office Action refusals of registration

  4. Gain dos and don’ts for working with the Examiner when responding to Office Actions

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 .


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.


Christopher L.

Outstanding materials and instruction.

Anh N.

Very informative and great practice tips.

Earl B.

This lady knows her stuff... pay attention.

Robert S.

I learned from one of my mentors the importance of ending my trainings precisely on time as an indication of professionalism, preparation, and especially respect for participants and their time.

Todd P.

Wonderful speaker and sharp, crisp delivery of detail within the limited time.

Rebecca Z.

I always enjoy this presenter. Clear communication, solid content. Thank you!

William B.

Stacey is great. Good presentation.

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