The Trademarkabilities® Masterclass is jam-packed with six sessions and approx. 10.5 hours of on-demand video instruction to help you confidently navigate all aspects of the trademark application process.


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  • Client intake and talking to your clients
  • Filling out the USPTO forms like an expert
  • Responding to refusals of registration (Office Actions)
  • Maintaining and renewing registrations, check out all you'll learn in the detailed outline below!
THE APPLICATION PROCESS

1

Why Intellectual Property (IP) is Important to Our Clients

2

Clearance Searching: Preliminary/Full Trademark Searches

3

An Overview of the Trademark Application Process
PROSECUTION AND POST-REGISTRATION

4

Foreign Expansion, Foreign Applicants

5

Office Action Types and How to Respond

6

Maintenance and Renewal Best Practices
“Trademarkabilities is hands down one of the best courses I’ve taken! It’s not just a ‘crash course’”
COURTNEY E., GREATER ST. LOUIS, MO

To help make our courses more affordable

Trademarkabilities proudly partners with PayPal Credit to offer 6 months same as cash financing to qualified applicants when choosing PayPal as your check out payment option.

SESSION 1
Why Intellectual Property (IP) is Important to Our Clients
Recognizing the importance of IP is critical to serving your clients. Understanding your clients’ business needs is essential to being a trusted advisor.

  • The difference between the types and branches of IP, so you can explain it to your client
  • What a trademark is, including its scope of protection
  • Who needs a trademark?
  • The benefits of federal trademark protection
  • Practicing before the USPTO and its jurisdiction
  • The trademark application process
  • The different types/hierarchy of trademarks
  • We’ll highlight some helpful trademark tools to assist you in your practice
SESSION 2
Clearance Searching: Preliminary/Full Trademark Searches
We learn so much about the strength of an application when we search, but is it required? Most refusals of registration can be avoided by conducting a search first.

  • The importance of searching
  • The different types of searches
  • Conducting preliminary word mark and design searches using the USPTO database
  • How to review a full availability search and assess risk
  • How to write a trademark opinion letter
SESSION 3
An Overview of the Trademark Application Process
In this session, you will learn how to properly file a trademark application and all of the rules pertaining to each section of the application. Plus, we’ll review and explain important USPTO forms and the entire application form in detail.

  • What is use in commerce?
  • Who is the proper owner?
  • Strategies for drawing and color claims
  • How to draft an accurate and acceptable identification of goods/services
  • How to choose a filing basis
  • How to submit an acceptable specimen of use
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SESSION 4
Foreign Expansion/Applicants & Handling USPTO/User Power Outages
We live in a global economy and trademarks are territorial in nature. Once your client is ready to expand internationally or you are representing foreign clients, you need to be aware of the rules and tools to adequately do your job.

  • The rules re: the foreign filing deadline
  • How to find and work with a foreign associate
  • New U.S. attorney rule for foreign entities
  • EU v. national filings (U.K. post-Brexit)
  • Limitations of Madrid applications in the U.S.
  • Rules and best practices for foreign applications and their filing basis in the U.S.
  • A sample trademark application based on a foreign application/registration
  • Filing USPTO forms in a USPTO power outage or with user system errors
SESSION 5
Office Action Types and How to Respond
In this session you will learn how to respond to the most common types of Office Actions, including tips on best practices and strategies for responding.

  • Amendment to the identification of goods/services
  • Disclaimers, specimen refusals and other issues
  • Merely descriptiveness and geographically descriptiveness refusals
  • How to handle surname refusals
  • How to amend to the Supplemental Register
  • How to claim acquired distinctiveness
  • Ornamental refusals and failure to function refusals
  • Generic refusals
  • Likelihood of confusion refusals
  • How and when to seek a consent agreement
  • Notice of Appeal overview
  • Letters of Protest overview
SESSION 6
Maintenance and Renewal Best Practices
In this session, you will learn the best practices for communicating with your clients during the maintenance and renewal phase of the registration. We will also review the relevant forms so you know exactly how to file.

  • The rules and best practices for keeping your client’s business long term
  • How to handle upcoming deadlines and communicate them to your client
  • The differences between Section 8, Section 9, and Section 15 declarations
  • Special rules for Supplemental Registrations and Madrid Protocol Registrations
  • Excusable non-use
  • How to submit specimens that will be accepted
  • Deleting goods/services that are no longer in use
  • How to respond to an audit request
  • How to assign trademarks and review of the USPTO module for assigning marks
BUT THAT'S NOT ALL!

The following extras are included with

THE MASTERCLASS

(Over $4400 in value)

On demand video replay available to all those who sign up – you never have to leave your home or office or incur any additional travel expenses - you can watch the videos over an over so long as you are logged into the learning platform.

  • Detailed workbook with all the rules, strategies and tips, along with our best practices - yours to keep
  • Over 30 client communication templates to streamline your trademark practice, including substantive templates and Office Action response templates to help you save time and get results for your clients
  • Invitation to join our monthly “Ask Me Anything” live Q&A sessions to address your questions and support you throughout your learning
  • Access to our exclusive members only community to get additional support
  • Access to my professional contacts and resources in case you need additional help
  • A one hour 1:1 meeting with me to help guide you in your practice (must be scheduled on my calendar)
  • CLE credit certified in the State of Illinois only (you may be able to transfer credit in your state)
“If I’d taken this course 2 years ago, it would have saved me months of time and probably helped me avoid a couple headaches along the way.”
KEVIN M., GRAND RAPIDS, MI
Okay! I’m ready.

Materclass Price: $2495

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