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Certification

This area includes details of the examination program and provides information for those seeking and those maintaining professional certification. In addition, employers may refer to these pages for more details about the certification program and its requirements.


Click to learn more about the Advanced Paralegal Certification Program
Click learn more about advanced
certification for paralegals!
 

Established in 1976, the CLA /CP (Certified Legal Assistant/Certified Paralegal) program has enabled the profession to develop a strong and responsive self-regulatory program offering a nationwide credential for all paralegals. Today over 15,000 paralegals have achieved this credential.


IMPORTANT NOTICE!!!
Beginning in the Fall of 2010, the Certified Paralegal Exam will move to computer based testing. CLICK HERE for information desribing the new process, just released by the NALA Certifying Board.

Professional certification is a time honored career development tool. It is helpful to employers and those seeking to enhance their career options. Because of the reliance on certification programs for career decisions, it is important a program is professionally managed and administered. NALA's over 30 years of experience in this area, and over 15,000 paralegals attest to the professionalism of the program.


 Current Directory of Certified Paralegals
This link opens a form that may be used to verify one's certification status. Please check the update date if a name is not listed.


Need to pay an exam fee?
  here for a payment window.


Want to file a request for CLE credits on-line?
 to save time and energy!



News & Upcoming Events
Florida Case Supports Paralegal Fee Awards as Attorney Fees

This opinion, released on June 28, considers an issue of first impression related to the award of paralegal fees in attorney fee awards.

More
Details about CP Exam Computer Based Testing Announced!

Beginning in September 2010, the Certified Paralegal exam will be offered via computer based testing to testing centers throughout the United States. NALA will be using the 200+ ACT testing center network of colleges and universities, and additional sites may be established in schools without ACT testing centers . . .

More
Special Membership Program for Employers

NALA has announced a program of offering discounts off annual membership dues to employers with multiple NALA members. Details may be found on the web site under "About NALA & Join" ...

More
LEAP Class of 2010 Article Released!

As part of NALA’s LEAP program, the 2010 class was assigned to write an article on “Leadership” for publication on the NALA Web Site. Read on to learn more and access the article

More
Need a product or service for your office?

The NALA Vendor Directory is a terrific place to start. This is a list of legal vendors offering a great range of help including deposition services, document services, and investigations. Click the link below...
More      

 
Click here for more news articles
 
Trademarks

This page summarizes the Advanced Paralegal Certification course on Trademarks. Use the links below to review the items, register or login to the course. If you have not already registered as a user on the NALA APC web site, click "Register for the Course." If you have already registered for this or another APC course, you have already created a user account, click "Login."

Paralegals who are not seeking the Advanced Paralegal Certification credential are welcome to register and take any APC courses as advanced continuing education programs. CLE credit is available upon completion of the courses from NALA for Certified Paralegals, and from various state CLE programs.

Prerequisite Knowledge Learning Contract Register for the course
Fee:   $250 Members; $300 Non Members
Login

Course Description


This course discusses the detailed steps in procuring, policing, and defending a trademark. We also explain the logic behind the laws and the strategies set forth. The course reviews:

  • Related sections of the Lanham Act and the Trademark Manual of Examining Procedure (TMEP);
  • The jurisdiction of federal and state courts;
  • Strategies, such as selection of venue and Anticybersquatting Consumer Protection Act (ACPA) v. Uniform Domain Name Resolution Policy (UDRP) proceedings; and
  • Protective measures, such as defensive registration and vetting contact information from the WHOIS database

The Trademarks APC course relies on learner participation through case studies, interactive content, and internet research. Upon completion of the course, paralegals will have completed exercises involving:

  • Clearance: Knock-out and Comprehensive Searches
  • Strength of Marks
  • Search Criteria Memorandum
  • Internet Search Resources and Pointers; Industry Resources
  • USPTO Websites: Trademark Electronic Application System (TEAS), Trademark Electronic Search System (TESS), Trademark Document Retrieval (TDR), and Trademark Application and Registration Retrieval (TARR)
  • Application Filing Fees, Definition of Goods and Services
  • Handling USPTO Office Actions
  • Abandonment, “Naked Licenses”
  • Docketing, Receiving a Filing Date
  • Acceptable Specimens
  • Acquired Distinctiveness Doctrine
  • Post-registration Maintenance Duties: Nonuse and Incontestability
  • Madrid Protocol
  • Assignability of Marks, Recording Assignments, and Recording Fees
  • Licenses: Exclusive and Nonexclusive, Territorial Restrictions, and Term
  • No Assignment Clauses, Sales Quota Clauses
  • Related Companies Doctrine
  • Pre-trial Issues: Consumer Surveys, Venue Selection, Motions
  • Litigation: Jurisdiction, Drafting Complaints and Answers, Motions, Defenses
  • Trademark Trial and Appeal Board (TTAB), Inter Partes Proceedings: Concurrent Use, Federal Rules, Summary Judgment, Opposition, Withdrawal, and Appeals
  • Domain Names, Typosquatting, ACPA, and UDRP
  • Ethics

Reading exercises include review and analysis of current articles on:

  • The Lanham Act and Unregistrable Terms
  • Docketing Software
  • TEAS, TESS, TARR and TRD
  • Current Trends in International Registrations of Marks
Prerequisite Knowledge

This course is written based on the assumption that paralegals taking and seeking to complete the Advanced Paralegal Certification course on Trademarks have the Certified Paralegal credential and a general understanding of the following:

Trademarks and domain names
Trademarks and domain name terminology
Trademark tools
Research skills

Course Modules

The Advanced Paralegal Certification course on Trademarks consists of successful completion of 11 modules of text, assessments, and assignments.  The modules and their subjects are as follows:
 

1. Clearance
The initial stages of procuring trademark registration include clearing a mark for use. Clearance is a search and analysis process typically comprised of a “knock-out” search and a comprehensive search. These searches reveal prior use of or intent-to-use similar marks and shed light on the protectability of a mark. This module tracks the clearance process and provides insight to performing search and analysis tasks.
2. Application
After clearing a mark for use, it’s time to apply for federal registration. Paralegals often prepare trademark applications for submittal to the USPTO. Therefore, it’s essential to know the filing requirements and be familiar with the methods of filing. This module identifies the types of applications available and outlines the proper form and content necessary to obtain a filing date and serial number.
3. Prosecution
In this process, the application is reviewed for defects of form and substance. Topics in this module include due diligence, office actions, acquired distinctiveness, correspondence, certificate of mailing, final refusal, appeal, publication, opposition, dividing an application, statement of use, issuance, notice of allowance, abandonment, docketing, and extension of time.
4. Registration Maintenance
During the life of a registered mark, the mark’s owner is responsible for properly using the mark, proving continuous use, claiming incontestability, renewing the mark, and policing against the use of confusingly similar marks. Like registration filings, the USPTO encourages electronic filing of post registration correspondence through the TEAS system. This module covers the paralegal’s involvement in these post-registration maintenance duties.
5. International Registration
This module discusses the filing requirements and procedures for obtaining a Certificate of Extension of Protection through the Madrid Protocol, which is equivalent to registering a trademark in a foreign country. In this module, we focus on requests for extension of protection originating in the United States and briefly discuss requests for extension of protection in the United States originating from other countries.
6. Assignments
Trademark assignment is a transfer of ownership from the trademark owner to another party. In the assignment transaction, the trademark owner is the assignor and the receiving party is the assignee. A valid assignment conveys both the mark and the goodwill of the business in which the mark is used. This module covers the procedures for drafting and recording a valid trademark assignment between the assignor and assignee.
7. Trademark Licensing
This module discusses how to draft a licensing agreement and explores many of the common terms and conditions that appear in licensing agreements. We’ll look at the importance of quality control in monitoring a licensing agreement and discuss the benefits of the related companies doctrine.
8. Litigation
This module focuses on pre-trial issues related to litigation of trademark issues. The issues for litigation and post litigation are similar to corresponding civil litigation issues.
9. Inter Parties Proceedings
The primary functions of paralegals in preparation for and during inter parties proceedings are drafting pleadings and motions, gathering evidence, and docketing. Topics in this module include types of inter parties proceedings, commencement of opposition and cancellation proceedings, discovery, motions, withdrawal and trial procedure.
10. Domain Names
In recent years businesses have increased their use of the Internet for electronic commerce and advertising. This module introduces domain names, explores their viability as trademarks, and discusses the legal implications of misusing trademarks on the Internet.
11. Ethics
Paralegals have an ethical obligation to conduct themselves in accordance with the same standards required of an attorney under the Patent and Trademark Office Code of Professional Responsibility. This module reviews the USPTO rules, as well as other paralegal codes.