Office Action Boot Camp (Course + Workbook)
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About this course
If you've ever cursed under your breath at receiving a likelihood of confusion or merely descriptive refusal, we're here to help. Perhaps you're brand new to filing trademarks and even the procedural ones (disclaimer, specimen, mark description, identification of goods/services, etc.) are causing you stress. After all, no one ever teaches you how to properly research and draft an Office Action Response do they? Most of the time, you stitch together something, cross your fingers, and hope for the best...because why would any trademark attorney teach you the tricks of the trade?
But thanks to our Office Action Boot Camp, you'll get all the instruction, tutorial, and EVEN A WORKBOOK OF OVER 30 SAMPLE RESPONSES that you'll ever need to draft winning arguments to reverse the USPTO's refusals!
What's inside?
I. 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)
II. 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 the drawing of a mark
- Description of mark
- Color claims
- Foreign translations/transliterations
- Information requests
- Amendment to Supplemental Register
- Correcting/changing an applicant's entity name and/or address
III. Substantive Issues
- 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
IV. Review of over 30 Successful Office Action Responses (workbook with over 1500 pages!)
V. Q&A session
Testimonials
"I expected to receive Office Action templates and hear explanations of the templates. This class far exceeded my expectations by the detailed strategies offered to trademark practitioners, the number of templates shared, the external resources suggested the presenters' level of expertise and the duration of the course. Although it was advertised as a five-hour course, I doubted it would (really) last that long! It was clear that both instructors are passionate about the subject matter and helping others. Sonia is very engaging as an instructor. Her thorough explanations were transparent and helpful. I appreciated Erik's level of expertise as a former USPTO trademark examiner and his extremely detailed analyses for the Office Actions and other information he covered". – Kimra Major-Morris
"I expected to be taught the basics to more advanced Office Action arguments and how to handle claims. The class more than met my expectations. The workbook alone was a huge help and resource. If anything, I don't think I got EVERYTHING I could out of it due to my lack of experience with Office Actions. That being said, I know it will be an invaluable tool for me to learn, grow, and return to time and again. Much like a treatise. As for the instructors, I appreciate the honesty, candor, and "realness". It was nice for someone who clearly knows so much about the topic to be so open and willing to share that information." – Anonymous
"The course was great and came at the right time for me as I am adding more and more trademark work to my core patent practice. The material answered directly some simple practical questions I had – e.g., how to retrieve only registered live marks in a search and downloading multiple records for evidence – and also provided valuable depth to legal arguments for traversing refusals. Kudos to Sonia and Erik!" – Betsy Dowd
"I have been waiting for a publication that lays out effective processes for responding to trademark Office Actions. Erik’s workbook is able to clarify the arcane, and his publication can help any practitioner to analyze and present the best possible arguments to USPTO examining attorneys." – Steven Weigler
"The Office Action Boot Camp is a one of a kind class that is a great resource for new and experienced trademark lawyers. I have purchased trademark materials from Thompson West and Lexis, and they don’t come close to this class. Rarely do solo practitioners get to learn from trademark experts, but here is your chance. The class not only provides great content about how to respond to office actions, but you also learn the behind scenes tips and secrets that aren’t often in treatises and CLE’s. The information is comprehensive and a lifetime educational resource you can always refer to when you need to. I’ve already improved my performance. I learned how to structure my response, the important content to include, and what the examining attorney and their bosses need to see to be persuaded. You also learn how to preserve the record, in case the examining attorney doesn’t agree. It doesn’t hurt that Sonia and Erik, both trademark experts, are great personalities who make the course exciting." – Tony Booker
"Sonia and Eric's Office Action Bootcamp was awesome! I have taken several of Sonia's courses to build upon my skills and they never disappoint. As always, she delivers high-quality content and valuable practice pointers that will build your confidence and make you a better trademark attorney. As an advanced practitioner, I'm looking forward to the upcoming TTAB Academy and anything else she has to offer :)" – Ticora Davis
"I just wanted to reach out and say thanks. I purchased your Office Action Boot Camp. You and Erik absolutely crushed it. The info was so helpful and actionable." – Joey Vitale
"I just want to say I 'won' my first Office Action! It was a likelihood of confusion issue and it was a doozy to write. I didn’t think we’d get approval but here we are! Shoutout to Erik Pelton & Sonia Lakhany. I drafted the response immediately after their Office Action Response course. It helped me immensely. HIGHLY recommend." – Tara Murphy
"I am about halfway into the video replay and it has been excellent content so far. I can't wait to start implementing some of the strategies for responding to Office Actions containing the likelihood of confusion refusals (just received one that will be a pain to address). Also, I took a quick glance at the workbook, which is also excellent. I have already decided to use a lot of formatting, such as providing a table listing the cited registration in the text of an Office Action. Plus, I can't wait to see different substantive arguments and how to structure those substantive arguments. Thanks to you and Erik for creating and providing great content!" – Xavier Hailey
If you haven’t taken Sonia Lakhany's office action class...then you should think about it! The whole workbook has tons of actual office action responses. Worth it to have it easily accessible and not have to reinvent the wheel every time. - Reonna Green