Masterclass Outline

The Trademarkabilities® Masterclass is jam-packed with six sessions and approx. 10.5 hours of on-demand video instruction to help you navigate all aspects of the trademark application process, from client intake, to filling out the application, responding to refusals of registration (Office Actions) and even maintaining and renewing registrations. Look at all you’ll learn:

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To help make our courses more affordable, Trademarkabilities is proud to partner with PayPal Credit to offer 6 months same as cash financing to qualified applicants when you choose PayPal as your payment choice at check out. See terms and conditions below.

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BEGINNING MODULE: SESSIONS 1-3 (approx. 5.5 hours of instructions)

SESSION 1: Why Intellectual Property (IP) is Important to Our Clients

Understanding the importance of IP is critical to serving your clients. Understanding your clients’ business needs is critical to being a trusted advisor.

We will review:

  • 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 and 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.

We will review:

  • The importance of searching
  • The different types of searches
  • How to conduct a preliminary word mark search and a design search 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. We will also review screenshots of every field of an actual application and explain them in detail.

We will review:

  • Use in commerce
  • Ownership
  • Drawing and color claims
  • Mark descriptions
  • How to draft an accurate and acceptable identification of goods/services
  • How to choose a filing basis
  • How to submit an acceptable and adequate specimen of use
  • Plus, we'll review pertinent USPTO forms related to filing applications, statements of use, and extensions of time 

INTERMEDIATE MODULE SESSIONS 4-6 (approx. 5 hours of instruction)

SESSION 4: Foreign Expansion, Foreign Applicants and 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.

We will review:

  • The rules re: the foreign filing deadline
  • How to find and work with an foreign associate 
  • New U.S. attorney rule for foreign entities 
  • EU v. national filings (U.K. post-Brexit)
  • Madrid v. national filings (need Swiss francs account)
  • 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
  • How to file USPTO forms when there is either a USPTO power outage or 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.

We will review how to address these types of issues:

  • Amendment to the identification of goods/services
  • Disclaimers, specimen refusals and other administrative issues
  • Merely descriptiveness and geographically descriptiveness refusals
  • 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 to seek a consent agreement
  • Letters of Protest
  • Notices of Appeal

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.

We will review:

  • The rules and best practices for keeping your client’s business long term
  • How to keep on top of upcoming deadlines and communicate them to your client
  • The differences between Section 8, Section 9, and Section 15 declarations
  • Excusable non-use
  • Special maintenance and renewal rules for Supplemental Registrations and Madrid Protocol Registrations
  • 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

All of the courses include: 

  • 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 (a $500 value) – yours to keep
  • Over 30* client templates you can utilize as is or modify and edit to suit your needs, designed to help you save time and money and get results for your clients (a $3000 value) (*fewer templates in the Beginning and Intermediate Modules)
  • Access to our exclusive members only community to get additional support
  • 2x/month live "Ask Me Anything" Q&A sessions to address your questions and support you throughout your learning
  • Access to my professional contacts and resources in case you need additional help
  • One-on-one mentoring available (for an additional fee)
  • CLE credit certified in the State of Illinois only (you may be able to transfer credit in your state)

 

Beginning Module Price: $1195

Introductory Price: $999

 

 

Intermediate Module Price: $1495

Introductory Price: $1249

 

 

Masterclass Price:
$2695

Introductory Price: $1995

 

PayPal Credit
Trademarkabilities is proud to partner with PayPal Credit to offer 6 months same as cash financing to qualified applicants when you choose PayPal as your payment choice on our check out page. See terms and conditions above.
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To try our course for FREE before you buy, simply choose the FREE PREVIEW option. You can then watch Session 1 of the Masterclass in its entirety with our compliments and no further obligation. If you enjoy it, simply submit payment to continue with the course or choose another course that meets your needs.

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