Yes, we can! And we need to. Cannabis has taken the trademark community by storm because well...none of us know what is going on! It's legal in some states but still illegal federally...so how do we handle clients who want to get into this industry and protect their marks?
You may have heard that the USPTO is considering moving to one $350 application for filing trademark registrations. In addition, they want to charge fees for things like not using the IP manual to choose goods and services AND for going 1,000 characters beyond the first 1,000 characters in the free-form text box, including punctuation and spaces! Whew.
What is "Email Efficiency for Attorneys"?
Well... this course is for you if you spent the last weekend "catching up on your email" (or at least thinking about it).
Don't you wish law school had prepared us for the real challenges of being a lawyer? You know, challenges like waking up to 342 new emails at 6 am or how "cleaning out your inbox" has somehow become its own part-time job.
Attorneys struggle with these email dilemmas a lot. And after many years of fine-tuning, it gets better! Sonia shares everything she's learned about seamlessly managing her inbox with you. No gate-keeping here!
Email Efficiency for Attorneys was a tip-filled webinar hosted by Sonia on April 3, 2024.
As a trademark attorney, you're no stranger to dealing with the intricacies of trademark searches and the USPTO. But what about those challenging client conversations that keep you up at night? Fear not! This CLE-eligible course will give you the strategies to turn those tricky convos into triumphs.
It sure helps to have a starting point, doesn't it? Why reinvent the wheel when you can simply download these Trademark Search and Clearance Opinion Letter templates in Word and start typing right over it?
Customize these thorough and detailed templates for your client's needs and relieve the worry that you're forgetting important boilerplate language!
You know how Sonia is always telling you to check in with your clients regularly? And how she always gets on you to to a brand/IP audit to see how else you can be of service?
When you're first starting out, or even if you're seasoned, it's hard to know if the description you've drafted for your client's trademark application is complete. How do you know if you included everything? What if you left something out?
This guide is complete with screenshots and explanations of all the forms in TEAS, so you'll always know which one to use, even on a rare occasion. Keep this one bookmarked for a rainy day!
This template provides you the scripting and information on what you need to attach to cover your bases, not only to file the actual withdrawal but email language leading up to the deadline.
You are likely familiar with the concept of "related goods and services" within trademarks. This is where classes of goods and services are searched together because they are treated as one-and-the-same by the USPTO. The best example of this is apparel. You must also search other classes, such as watches, shoes, and accessories. But what other "pairings" are out there? Several, actually. But don't worry, Sonia's done the heavy lifting for you. This handy guide will help you understand which classes go together, so you don't accidentally leave one out of your search or the application. Some of these pairings may surprise you!
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?
This Volume 2 edition of the Office Action Workbook (see the original here) features even more responses, covering even more subject matter! The responses are all from real successful examples, and in addition to many likelihood of confusion and descriptiveness responses, this version features some of the newest villains such as genericness, specimen issues, cannabis, CCBD issues (including CSA/unlawful use claims), and failure to function.
Just like a grandmother's recipe book for making her delicious cookies, refer to this Plan of Attack every time you get an Office Action. It's a step-by-step guide to help you figure out exactly what to do, ask, or look for so you won't miss a thing.
Consider this a gift from your trademark attorney fairy godmother! Gone are the days you go back and forth with a client trying to explain why their specimen was rejected, what constitutes an acceptable specimen, and all the teeny tiny details that go into showing use. Better yet, use this guide to advise your clients on the front end on how to design their marketing and sales materials to ensure there won’t be a rejection in the first place!
This guide will take you through all the different parts of TSDR, so you'll be an expert on the database in no time. It comes complete with screenshots and explanations, too!
If you're new-ish to trademark practice, the process of assigning a trademark can seem a bit daunting. To help make the filing go a bit more smoothly, this guide features a step-by-step video tutorial on how to file an Assignment with the ETAS system of the USPTO (yup, it's not through TEAS), plus an actual template Assignment Agreement for you to use.
This helpful guide features a step-by-step video tutorial on where and how to file an Appointment of Attorney, plus sample language/email example to send your new client.
Let's Get Miti-GREAT! was taught by Erik Pelton, who used to be an Examining Attorney at the USPTO, so who better to lead this training? He's got all the secret sauce and insider tips that take years of experience to accumulate, so you don't have to.
Every application for a trademark has to have an owner. You probably knew that. Pretty basic information. And usually it's pretty straightforward. In most instances, your client/the Applicant is an individual, a limited liability company, or a corporation. It's all smooth sailing until there are ownership changes, mistakes in the ownership information as entered (perhaps by a pro se applicant or a previous attorney), or when it's time to renew the mark.
If you have clients who sell products online and have e-commerce websites, you've definitely heard about the Amazon® Brand Registry. It is an exclusive program offered by Amazon® that legitimizes your client's brand. It also gives your client advantages over non-registered brands. But how do you go about counseling your client's on their rights and obligations of being an online seller?
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 dicussion!
This jam-packed 45-minute video has the best of Sonia and Erik's time-tested advice, strategies, and ideas on building referrals for your law practice. Learn from the very best on what works, what doesn't, and what may actually surprise you.
As a law firm owner, it can often feel like we're wearing more hats than we can handle. We have to be the sheriff, the firefighter, the grocery store, the mayor, and everything in between. When the overwhelm gets the best of you, it can be easy to shut down and not do anything at all because you just don't know where to start!
Letters of Protest can be an effective tool to block a conflicting trademark application. They can also save a lot of money and time in the right circumstances. In this pre-recorded, downloadable training (for you to watch at your leisure!), we will explore the circumstances, strategies, and mechanics of filling successful letters of protest.
Wanna know a really great way to add value to your clients AND create a revenue stream? Go back to all your clients' Supplemental Registrations and apply for Principal!
Every now and again, there is a need to negotiate a Co-Existence or Consent Agreement. But, where do you start? How do you know you're not missing something? How are you supposed to know what to ask for or agree to?
Want the scoop on how to make client communication a breeze? Want to be able to have a thorough yet quick and easy response to most of your client’s needs? You’ve come to the right place!
For this training, Sonia and Erik are back again to share 10 ways to generate revenue streams and continue adding value to your trademark client relationships post-registration! As an added value, Sonia and Erik talk about how to structure the fees and give you a few options on how to go about pricing these additional services.
It's not exactly the most exciting of topics but very much a necessary one. While trademarks are one of the best practice areas out there, it isn't an exception to the rules pertaining to ethics and conflict checks that we are held to as attorneys.
Sonia and Erik are back! We've had a huge demand for this class and we finally made it happen. Most of us can file an application, deal with Office Actions, and get the mark to registration. But what happens when there is an infringer afterward? Or even before? Even if you aren't a litigator, we should all be equipped with the skill set to send and respond to a trademark infringement cease and desist letter. Sometimes you may even need to send one. We've got you covered either way.
A trademark lawyer's most dreaded words to read when she opens an Office Action...until now! Master the art of USPTO Office Action responses with our 5-hour online boot camp plus workbook.
A trademark lawyer's most dreaded words to read when she opens an Office Action...until now! Master the art of USPTO Office Action responses with our 5-hour online boot camp.
Struggling to find content ideas for your blog and social media? Sonia’s “100 Blog Post Ideas to Grow Your Trademark Practice” cheat sheet has you covered with answers to common client questions, debunked myths, and essential guidance for entrepreneurs!
There are few things worse than receiving an email that a Notice of Opposition was filed against your client's trademark application. You waited patiently for 3-4 months for the Examiner's review, resolved the Office Actions, and all that was (supposed to be!) left was the 30-day publication period...then boom. Everything is stalled. Or maybe your client is the one who notices an application that is likely to cause confusion. Would you know what to do? What are the next steps after the initial filings? How do you handle discovery?
