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The IPLEGALED Trademark Paralegal Certificate Course Has Been Expertly Crafted to Teach You How to Handle the Administrative Side of Trademark Practice

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The IPLEGALED Trademark Paralegal Certificate Course Has Been Expertly Crafted to Teach You How to Handle the Administrative Side of Trademark Practice © 2001-2015 IPLEGALED, Inc. All rights reserved The IPLEGALED, Inc. Trademark Paralegal Certificate Course COURSE OUTLINE (Hyperlinks underlined) CHAPTER 1: INTRODUCTION Ch.1/A: The United States Trademark System Ch.1/B: Trademarks - General Concepts 1. Why we have a trademark system 2. The Lanham Act 3. What is a trademark? 4. What is a Domain Name? 5. What is a State Trademark? 6. What is a service mark? 7. What is a collective mark? 8. What is a collective membership mark? 9. What is a certification mark? 10. What is concurrent use registration? 11. What is a trade name? 12. What is trade dress? 13. What are house marks and product marks? 14. What is right of publicity? 15. What are trade secrets? 16. How long does a trademark last? 17. State versus federal trademarks 18. Is registering a trademark necessary? 19. What kind of protection does a trademark offer? 20. What is the value of having a registered trademark? 21. What does the United States Patent and Trademark Office (“USPTO”) do? 22. How an application becomes a trademark ("Trademark Prosecution") 23. TM, SM and ® symbols 24. The Trademark Registers A. Principal Register B. Supplemental Register 25. Resources: laws and rules and the TMEP 26. The USPTO Web Site 27. The filing date 28. Structure of a trademark file 29. Docketing CHAPTER 2: MARK SEARCHES / FILING BASIS / DRAWINGS / SPECIMENS Ch.2/A: How a trademark is chosen Ch.2/B: What makes a good & strong trademark Ch.2/C: Conducting trademark clearance search Ch.2/D: Goods and services - Classification Ch.2/E: Basis for filing a trademark application 1. Use of the trademark 2. Intent to use the trademark (“ITU”) Ch.2/F: Drawings 1. Standard letters and characters 2. Stylized letters and characters Ch.2/G: Specimens of the trademark 1 © 2001-2015 IPLEGALED, Inc. All rights reserved CHAPTER 3: CORRESPONDENCE WITH THE USPTO Ch.3/A: How to communicate with the Patent & Trademark Office Ch.3/B: Electronic filing (TEAS etc.) Ch.3/C: Filing by Mail Ch.3/D: Faxing Documents to the USPTO Ch.3/E: Email Correspondence with the USPTO Ch.3/F: Hand Delivered Documents Ch.3/G: Methods of Payment CHAPTER 4: FILING A USE-BASED TRADEMARK APPLICATION Ch.4/A: Filing a use-based trademark by mail Ch.4/A/1: Transmittal Sheet Ch.4/A/2: Parts of the use-based trademark application Ch.4/A/3: Signatures Ch.4/A/4: Marks that include an individual‟s name or portrait - Consent to registration. Ch.4/A/5: Specimens Ch.4/A/6: A Return Receipt Post Card Ch.4/A/7: Application Format Ch.4/A/8: Drawings Format (for stylized marks only) Ch.4/A/9: Specimen Format Ch.4/A/10: Finalizing the “Use” application for filing by mail Ch.4/B: Filing a trademark application using TEAS Ch.4/B/1: TEAS, TEAS Plus and TEAS Reduced Fee (TEAS RF) Ch.4/B/2: Elements in TEAS applications Ch.4/B/3: Additional requirements for TEAS Plus application Ch.4/B/4: Ongoing requirements for TEAS Plus applications Ch.4/B/5: TEAS tutorial Ch.4/B/5/(a) TEAS Plus option Ch.4/B/6: TEAS image submission rules Ch.4/B/7: TSDR (Trademark Status and Document Retrieval) Ch.4/C: Power of Attorney Ch.4/D: Assignments and Assignment Recordation (see also Ch. 6) CHAPTER 5: FILING AN INTENT-TO-USE (“ITU”) TRADEMARK APPLICATION Ch.5/A: The Intent-to-Use Application Ch.5/B: Filing an ITU application by mail. Ch.5/C: Filing an ITU application using TEAS. Ch.5/D: Allegation of Use - Amendment to Allege Use (“AAU”) & Statement of Use (“SOU”) Ch.5/D/1: Filing a Amendment to Allege Use / Statement of Use by Mail Ch.5/D/2: Using TEAS to file a Statement of Use/Amendment to Allege Use Ch.5/E: Request for Extension of Time to File a Statement of Use Ch.5/E/1: Filing a Request for Extension of Time to file a SOU by Mail Ch.5/E/2: Using TEAS to file a Request for Extension of Time to File a SOU Ch.5/F: Docketing after filing a new application CHAPTER 6: ASSIGNMENTS & ASSIGNMENT RECORDATION Recordation Form Cover Sheet (Form PTO-1594) Electronic filing using ETAS CHAPTER 7: TRADEMARK PROSECUTION Ch.7/A: The Pre-Examination Stage Filing Receipt and Corrected Filing Receipt Notice of Incomplete Trademark Application 2 © 2001-2015 IPLEGALED, Inc. All rights reserved Ch.7/B: Trademark Examination Ch.7/B/1. First Action Allowance Ch.7/B/2. Refusal Ch.7/B/3. Office Actions Ch.7/B/4. Reviewing an Office Action and docketing due dates Ch.7/B/5. Responding to an Office Action (using TEAS) Ch.7/B/6. Responding using mail Ch.7/B/7. Priority Actions Ch.7/B/8: Extensions of time (none) Ch.7/C: Final Office Action Ch.7/C/1. Response to a Final Office Action a) Submitting a request for reconsideration b) Filing a Notice of Appeal c) Amending the application to comply with any requirements d) Filing a Petition to the Commissioner e) Amending the application to have it placed on the Supplemental Register f) Submitting evidence of secondary meaning g) Abandoning the present application and giving up altogether Ch.7/C/2: Abandonment Ch.7/C/3: Revival of an Abandoned Application Ch.7/C/4: Suspension Ch.7/C/5: Division of an Application CHAPTER 8: APPEAL Ch.8/A: Notice of Appeal Ch.8/B: Appeal Brief Ch.8/C: Appeal Brief - form and content Ch.8/D: Oral Hearing Ch.8/E: Examiner‟s Brief Ch.8/F: Appellant‟s Reply Brief Ch.8/G: Amendment during Appeal Ch.8/H: An Example of an Appeal Ch.8/I: Filing an appeal on-line using ESTTA CHAPTER 9: AFTER PROSECUTION Ch. 9/A: Publication for Opposition Ch. 9/B: Notice of Allowance (“NOA”) Ch. 9/C: Statement of Use (“SOU”) CHAPTER 10: AFTER REGISTRATION Ch.10/A: Declaration of Continued Use in Commerce (a “§8 Declaration”) Ch.10/B: Affidavit of Incontestability (“§15 Affidavit”) Ch.10/C: Term and Renewal CHAPTER 11: THE MADRID PROTOCOL Ch.11/A: What is a Madrid Protocol Application? Ch.11/B: When is filing a Madrid Protocol Application applicable? Ch.11/C: Madrid Protocol Application filing requirements Ch.11/D: How is a Madrid Protocol Application Filed and Processed? Ch.11/E. Advantages of the Madrid Protocol CHAPTER 12: THE EUROPEAN COMMUNITY TRADE MARK (CTM) SYSTEM 3 © 2001-2015 IPLEGALED, Inc. All rights reserved CHAPTER 13: ONGOING PROTECTION OF TRADEMARK RIGHTS Ch.13/A: Non-Use Ch.13/B: Generic Use Ch.13/C: Naked Licensing Ch.13/D: Enforcement Ch.13/E: Counterfeiting Ch.13/F: US Customs Protection (Department of Homeland Security) CHAPTER 14: LICENSING Example: Trademark license agreement 4 © 2001-2015 IPLEGALED, Inc. All rights reserved About the IPLEGALED Trademark Course - how to get the most out of it. Trademark administration is a very demanding area of legal administration. There are rules to master, abstract concepts to understand and always deadlines to meet. This course will teach you how to competently handle all these things. Try to set aside regular study times two or three times per week. Study for no longer than about three hours. This will help you retain and comprehend the materials. Take your time. Read all the text, even if you think you already know it or that you will not be using it. If you don't understand something immediately, keep trying until you do. Concepts introduced earlier in the course come up frequently in the later sections, so you have to be confident with one section before you go onto the next. At the end of each section there is a quiz. You must be on-line to take each quiz. To get the most benefit from the course, you must take all the quizzes (and to earn your certificate you must pass the final test). Take the tests immediately after finishing each chapter. Don't wait until later. The tests are designed to reinforce what you have learned - they are a very important part of the learning process. Each test is automatically graded. For every question you get wrong, you should go back to the course and review the topic until you fully understand it. If you get less than 70% for any test, then you should not go onto the next section. Instead, you should review the chapter and retake the test. Of course, it's an honor system, and it's up to you, but unless you fully understand the last section, the next sections will be very difficult. Once you've completed all the sections, there's a final exam. A score of 70% or above is required to pass the course, and a certificate is awarded upon passing. If you study diligently as we have suggested, you will pass the final with no trouble and will be awarded your Certificate. In the highly unlikely event that you do not pass the final within three attempts, then you will have to register to re-take the final (up to three additional times) and a pay an additional fee ($250). The entire course is designed to be printed out for use as a study guide and future reference manual. You may find it helpful to print out the course before you start, making notes as you go, or simply to use the printed version as your main study tool.
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