I am pleased to announce that for the first time I will be teaching an in depth “boot camp” course all about trademark Office Action. The course, on July 16th, will be taught alongside Sonia Lakhany. I strongly recommend the course “live” for Q&A and more, but downloads will be available.

I have responded to thousands of office actions in 19 years of private practice addressing the full spectrum of substantive and procedural refusals from the USPTO. Prior to launching Erik M Pelton & Associates in 1999, I was an examiner at the USPTO and wrote hundreds of office action refusals.

Imagine the value of authoring better response to refusals for your trademark clients. Successful applicants are more likely to become repeat clients and sources of referrals. With more than 20 templates provided, the value provided by the course is tremendous and far exceeds the enrollment cost ($997 early bird).

In this boot camp, I will be sharing some of my top tips acquired in more than 20 years in the field of trademarks and mentoring dozens of law students and attorneys. I will also be providing many templates from successful office action responses. The templates alone are more than worth the course price! These templates have never been made available by me anywhere else before as part of any other lecture or course.

For the full syllabus of this in depth five hour office action course, scroll down.

For more details and registration (early bird discount is only available for a few more days):

Course Outline

  • Overview -Practical matters such as timing, docketing, formatting, filing, and signatures and declarations -Using the Trademark Manual of Examining Procedure (TMEP) -Researching examples -Creating templates -Using evidence -What types of evidence to include and how to attach it -First Office Action versus Final Office Action/Request for Reconsideration -Preparing for a possible appeal through the Trademark Trial and Appeal Board (TTAB)
  • Procedural issues -Disclaimers -Specimen issues -Identification of goods/services -Changing filing basis -Adding/deleting classes -Failure to satisfy TEAS Plus requirements -Consent to register name(s), likeness(es), signature(s) of individual(s) -Changes in drawing of mark -Description of mark -Color claims -Foreign translations/transliterations -Information requests -Amendment to Supplemental Register -Correcting/changing applicant’s entity name and/or address
  • Substantive Issues Likelihood of Confusion -Assessing options regarding the cited registrations -Assessing DuPont Factors -Differences in goods/services -Differences in marks (meaning, spelling, appearance, sound, commercial impressions, etc.) -Third party uses/registrations -Sophisticated consumers -Prior pending applications Descriptiveness -Suggestive vs. descriptive continuum -Double entendre -Acquired distinctiveness -Disclaimer -Genericness -Ornamental/failure to function
  • Templates of 20 Successful Office Action Responses 
  • Q&A session

Share this blog post >

Leave a Reply

Your email address will not be published. Required fields are marked *