NO TRADEMARK
EXPERIENCE NECESSARY

We can teach you how to confidently serve clients before the USPTO regardless of your level of trademark experience. Whether you are a new attorney or pivoting from another practice, the Trademarkabilities Masterclass is right for you!

The Trademarkabilities® Masterclass was updated in December 2023 to reflect changes to the USPTO's new trademark search system! It is jam-packed with six sessions and approx. 12 hours of on-demand video instruction to help you confidently navigate all aspects of the trademark application process.

By joining the Trademarkabilities® community and completing the Masterclass, you'll learn the best ways to:

  • Perform client intake and talk to your clients
  • Fill out relevant USPTO forms like an pro
  • Respond to refusals of registration (Office Actions)
  • Maintain and renew trademark registrations

And those are just the highlights! Dive into the detailed outline below to learn everything we cover.

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What the Masterclass Covers

The Trademark Application Process
  • Section 1

    Why Intellectual Property (IP) is Important to Our Clients

  • Section 2

    Clearance Searching: Preliminary/Full Trademark Searches

  • Section 3

    An Overview of the Trademark Application Process

Prosecution and Post-Registration
  • Section 4

    Foreign Expansion, Foreign Applicants

  • Office Action Types and How to Respond

  • Section 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

Looking for a payment plan?

Trademarkabilities has a solution to help make our Masterclass more affordable. Please email us for more details.

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
NEW: 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
  • NEW: How to conduct preliminary word and design mark searches in 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 the entire trademark application and other relevant USPTO forms in detail.

  • What is use in commerce?
  • Who is the proper owner?
  • Drawing and color claims
  • How to choose a filing basis
  • How to draft an accurate and acceptable identification of goods/services
  • How to submit an acceptable specimen of use
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SESSION 4
Foreign Expansion/Applicants & The Trademark Modernization Act

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
  • 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.
  • The new Trademark Modernization Act proceedings and rules
  • 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 (ETAS)
BUT THAT'S NOT ALL!

THE MASTERCLASS

is already PACKED with value, and when you purchase, you'll also receive the following bonuses valued at over $4400!

On demand video replay available to all students. You never have to leave your home or office or incur any additional travel expenses to learn about this rapidly growing area of practice. You can watch the videos as many times as you like from your course login. 

  • Detailed workbook contains more than 375 slides 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 save you time and get results for your clients
  • Access to our FREE members only community for extra support, group mentorship, and networking
  • Join four (4) "Ask Me Anything" Live calls in your first year after purchase; additional calls available for low fee
  • 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.

Masterclass Price: $2745

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Still have questions? Email hello@trademarkabilities.com