Learn How to Perform a Trademark Search
Cokato MN attorney Tom James will be presenting a series of 3 webinars to teach paralegals, attorneys and entrepreneurs how to perform trademark searches using the USPTO's new search system. Demonstrations and practice exercises will be included to help students gain proficiency in searching the USPTO's database with field tags and RegEx (Regular Expressions).
Take one, two, or all three.
Register for Trademark Law Basics & Likelihood of Confusion
Register for The USPTO’s New Trademark Search System
Register for Advanced Trademark Searching with Regular Expressions
MODULE 1: Trademark Law Basics & “Likelihood of Confusion” Analysis
June 10, 2024
12:00 – 1:00 p.m. CDT
1:00 p.m. EDT; 11:00 a.m. MDT; 10:00 a.m. PDT and MST; 9:00 a.m. AKDT.
$30.
What qualifies as a trademark; types of trademarks (word, design, sound, trade dress, etc.); categories of marks; trademark registration and registration systems; the legal requirements for a valid trademark; duration of trademark rights; the Trademark Modernization Act; ethical issues in searching and clearing trademarks; Particular emphasis is given to the concept of "likelihood of confusion," including the DuPont and Sleekcraft factors, and USPTO and judicial guidance on such things as foreign and legal equivalents, unitary consideration, and relatedness.
MODULE 2: The USPTO’s New Trademark Search System: Field Tags and Drop-Down Menus
June 11, 2024
12:00 – 1:00 p.m. CDT
1:00 p.m. EDT; 11:00 a.m. MDT; 10:00 a.m. PDT and MST; 9:00 a.m. AKDT.
Cost: $30.
On November 30, 2023, the USPTO retired TESS (Trademark Electronic Search System) and replaced it with a new, cloud-based search system. Searches in the new system use different syntax and make use of the RegEx (Regular Expressions) programming language. This module introduces students to the USPTO's new search system, including guidance on when to use a drop-down menu search and when to use field tags. The second half of this course will focus on searching the USPTO database with field tags, guiding students with demonstrations. The module includes a set of exercises to give students a chance to practice using the new system to search the USPTO database.
MODULE 3: Advanced Trademark Searching with Regular Expressions
June 12, 2024
12:00 – 1:00 p.m. CDT
1:00 p.m. EDT; 11:00 a.m. MDT; 10:00 a.m. PDT and MST; 9:00 a.m. AKDT.
Cost: $40.
Learn how to use Regular Expressions with field tags to conduct a trademark search. The first part of this course explains what you need to know about syntax, wildcards, groupings, quantifiers, and logical operators. The second part describes the elements of a search strategy, beginning with how to immediately rule out a mark (“knock-out” search), then use Regular Expressions to broaden the search to include homophones, alternate spellings, and other potentially confusing similar marks; and finally, how to narrow the results and review records for potential confusion between an existing trademark and the one sought to be cleared. Attendees will also learn about the ethical issues that are raised by what the USPTO calls “dabbling” by non-trademark attorneys, and the line between trademark searches and practicing law. The course includes instruction on how to conduct clearance searches for design marks, too.
The module includes a set of over 50 exercises to give students a chance to practice searching the USPTO database using regular expressions.
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CLE credits:
Attorneys:
Alaska, Arizona,* Arkansas, Connecticut, Guam, Hawaii:, Minnesota, Mississippi, Missouri, New Hampshire,* New Jersey,** New York,*** North Dakota, Northern Mariana Islands, Virgin Islands, and Wisconsin: 1 credit hour may be claimed for each course (3.0 credit hours for all three.)
California: Georgia, Vermont: Approval pending.
Self-certify credit may be available in other jurisdictions.
Paralegals:
NALA and NFPA accredited for 1.0 continuing education credit hour for paralegals, per course (3.0 credit hours for all three.)
*Arizona and New Hampshire do not accredit CLE activities for the Mandatory Continuing Legal Education requirement. Because these courses have been approved and accredited in jurisidictions with similar MCLE standards, Echion believes they should also qualify for credit in Arizona and New Hampshire.
** New Jersey attorneys who take courses approved for CLE by another state (as these courses are) will receive 1:1 credit for these courses through reciprocity. However, attorneys should be aware that there are differences in requirements from state to state. Attorneys relying on reciprocity must ensure that they are also meeting the requirements of New Jersey’s program. BCLE Reg. 201:4
*** New York State Approved Jurisdiction Policy applies. These courses have been accredited in several Approved Jurisdictions, including Minnesota, Missouri, Arkansas, Wisconsin; others pending.
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Instructor: Thomas James is a LegalCorps attorney focusing on business start-ups, trademark and copyright law. He has over 20 years of experience; is admitted to practice in Minnesota, the Federal Circuit Court of Appeals, the United States Supreme Court, and the United States Trademark Trials and Appeals Board. He is the author of the books, E-Commerce Law, and IP Law for Non-IP Attorneys, several law review articles, and the law blog, The Cokato Copyright Attorney.
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