On Demand

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

1h 3m

Created on December 04, 2020





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

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