Trademarks

Trademarks

Courses Tabs

Overview
CLE Hours: 
20.0 (2.0 - Ethics & 18.0 Substantive)
CLE Credit: 
Ethics, Substantive
Course Level: 
Advanced
Prerequisite: 
General understanding of trademarks and domain names, trademarks and domain name terminology, trademark tools, and research skills.
Fees: 
$250 for Members and $300 for Nonmembers
Course Materials: 
Each module contains an audio/text lecture with slides to illustrate the lecture points. A test covering the module lecture is at the end of each module. The course features a full glossary.

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