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Keep the Change(s)
Original Program Date :
What is "Keep the Change(s)"?
For starters, did you know TESS is gone now? It was taken down on Nov. 30, 2023.
It's quite the end-of-the-year holiday present - the USPTO took away the TESS database we have been using for years, and replaced it with an entirely new search system. So that means we trademark attorneys have some catching up to do, don't we?
Not only do we need to learn what the new system involves, we also need to learn how to implement these changes into our practices.
Keep the Change(s) was an expert-packed webinar on Nov. 29, 2023, with Sonia Lakhany, Rachael Dickson, and Erik Pelton. Both Rachael and Erik used to be Examining Attorneys at the USPTO, so who better to lead this training? Not only did we go over the substantive legal knowledge, but then Sonia taught 3 major marketing strategies to use these changes in your marketing. Everyone loved the discussion!
Below is a general list of what was covered. The duration of this class is just over 2 hours.
And yes...
✓ You receive access to the training immediately upon purchase (start watching it right away if you want!)
✓ You have lifetime access
✓ CLE credit is offered (woohoo!)
Agenda:
The What
- Why searching the trademark register is important
- Why we are losing TESS
- Comparing TESS vs. TESS 2/The New Trademark Search Tool
- TESS2 limitations and unknowns
- Finding the glossary of field tags
- Some differences from TESS
- Useful field codes and operators
- 2(d) Likelihood of Confusion searches
- Design searches
- Searching designs and words together
- Determining descriptive and generic concerns using trademark search
- Finding the USPTO's mark searches
The How
- What TESS2 means for your trademark practice
- Will clients start searching marks themselves?
- What to change during your consultation process
- Implementing the changes into your workflows and processes
- Not one...
- Not two...
- But THREE major marketing strategies to use these changes to benefit your business development and gain more trademark clients
Reviews
"This is SO GOOD- thank you Sonia! 💖" - Lily Wittmeier, Esq.
"This is great!" - Merlyne Jean-Louis, Esq.
"This was excellent, thank you very much Sonia, Erik and Rachael!" - Shannon Villalba, Esq.
"Thank you guys! Very helpful." - Brittany Ratelle, Esq.
"Thanks so much for this!" - Jaime Tetreault, Esq.
"Great class!" - Laurie Williams, Esq.
Sonia Lakhany, 4L Education/Lakhany Law PC
Sonia Lakhany is the founder of the award-winning law firm Lakhany Law, PC and has been filing trademarks for almost a decade. She is considered a national expert in her field, as her work has been recognized and featured by numerous media outlets such as Bloomberg, Entrepreneur Magazine, Glamour Magazine, Business News Daily, and CBS.
Rachael Dickson
Rachael Dickson is a senior trademark attorney at Lloyd & Mousilli. She also provides trademark prosecution services and consults with other attorneys through her solo firm, Catalytic Law.
Rachael worked as an examining attorney at the US Patent and Trademark Office from 2017-2021, where she received a 2020 Customer Service Award. While at the USPTO, Rachael was part of a work group which specialized in reviewing applications to register trademarks with cannabis goods and services.
Rachael directed the Intellectual Property and Entrepreneurship Clinic at Suffolk University School of Law as a visiting assistant professor from 2022 – 2024. Her article High Hopes: Cannabis Trademarks at the USPTO is forthcoming in the Ohio State Technology Law Journal in 2025. Her current legal research focuses on disparate treatment of traditionally disfavored goods and services in the USPTO's trademark identification manual. She also regularly lectures on trademark prosecution and search topics.
Erik Pelton, Erik M Pelton & Associates, PLLC
Erik is all about energy, when he’s representing clients; speaking at a conference; teaching trademarks at Georgetown University; or leading the trademark clinic at Howard University, where for four years he guided students working with pro bono clients. Through it all, Erik draws on his superpower – the ability to distill complex legal principles and procedures into digestible, understandable, and actionable concepts. Erik’s talent for clarity allows him to not only paint a clear picture of the why, but also the what’s next as he explains options and possible paths forward for clients as they build and grow successful brands.
After cutting his teeth as a trademark examiner for the USPTO, Erik has, in the years since, grown his trademark law practice with the enduring ideals of customer service and affordability. Today, with more than 4,000 client trademark registrations to his name, as a published author, creator of an app for trademark practitioners, and host of the “Tricks of the Trade(mark)” podcast, you won’t find anyone else who will care brands and trademarks as passionately as he does.
Erik lives in Falls Church, Virginia, where he also provides pro bono work for veteran-owned businesses.
