Course Syllabus

Introduction - How to use the Trademarks 103 Videos

After applying for a federal trademark, the most common result is receiving an Office Action, which is a written correspondence from the U.S. Patent and Trademark Office that specifies outstanding “issues”. Each video in the Trademarks 103 database examines a particular “issue” from an Office Action.

In the Trademarks 103’s database, watch the specific educational videos that are relevant to resolving the issues in YOUR Office Action.

How to Read an Office Action

Learn how to read and understand an Office Action from the U.S. Patent and Trademark Office, including how to find and understand the relevant information in order to overcome issues with your particular application.

How to Contact the Attorney Reviewing your Application

Learn how to contact the trademark examining attorney from the U.S. Patent and Trademark Office that is reviewing your application.

How to Electronically Respond to an Office Action

Learn how to electronically respond to an Office Action from the U.S. Patent and Trademark Office.

I received a Non-Final Office Action

Learn how to read and understand a Non-Final Office Action from the U.S. Patent and Trademark Office.

I received a Final Office Action

Learn how to read and understand a Final Office Action from the U.S. Patent and Trademark Office.

How to Respond to an Examiner’s Amendment

Learn what constitutes an Examiner’s Amendment – and how to respond if you receive an Examiner’s Amendment.

I received a Priority Action or an Examiner’s Amendment/Priority Action

Learn what constitutes an Examiner’s Amendment/Priority Action – and how to respond if you receive an Examiner’s Amendment/Priority Action.

Need help navigating the USPTO electronic system?

Learn how to find technical assistance for using the U.S. Patent and Trademark Office’s electronic system.

Disclaimer Requirement

Learn how to respond to a Disclaimer requirement.

Entity Clarification Requirement

Learn how to respond to an Entity Clarification requirement.

Amended Mark Description and/or Color Claim

Learn how to respond to an Amended Mark Description and/or Color Claim requirement.

Amended Identification of Goods and/or Services Requirement

Learn how to respond to an Amended Identification of Goods and/or Services requirement.

Amended Classification and Identification of Goods and Services Requirement

Learn how to respond to Amended Classification and Identification of Goods and/or Services requirements.

Multi-Class Application Requirements

Learn how to respond to Multi-Class Application requirements.

Translation Statement Requirement

Learn how to respond to a Translation Statement requirement.

Name Inquiry

Learn how to respond to a Name Inquiry requirement.

Request for Information

Learn how to respond to a Request for Information from the U.S. Patent and Trademark Office.

I received a “Notice of Allowance” from USPTO, but now I need a Statement of Use?

Learn what it means to receive a “Notice of Allowance” from the U.S. Patent and Trademark Office – and how to complete the next step of filing a Statement of Use.

Can I get an extension to file a Statement of Use?

Learn how to receive an extension to file a Statement of Use.

Submitting a Statement of Use

Learn how to submit a Statement of Use.

Unacceptable Specimen or Statement of Use

Learn how to overcome an unacceptable Specimen or Statement of Use Refusal.

Mark on Specimen and Drawing Do not Match

Learn how to overcome a refusal that the Specimen and Drawing Do Not Match.

Sections 1, 2, and 5 Refusal - Mark is Ornamental

Learn how to overcome a Section 1,2, and 5 Refusal – Mark is Ornamental.

Section 2(d) Refusal - Likelihood of Confusion

Learn how to overcome a Section 2(d) – Likelihood of Confusion Refusal.

Advisory: Prior Pending Application(s) Filed

Learn what it means to receive a Prior Pending Application Advisory.

I received a Suspension Notice about a Prior Pending Application(s)

Learn what it means to receive a Suspension Notice about a Prior Pending Application.

Section 2(e)(1) Refusal – Mark is Merely Descriptive

Learn how to overcome a Section 2(e)(1) Refusal – Mark is Merely Descriptive.

Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive

Learn how to overcome a Section 2(e)(2) Refusal – Mark is Primarily Geographically Descriptive.

Section 2(e)(4) Refusal – Primarily Merely a Surname Refusal

Learn how to overcome a Section 2(e)(4) Refusal – Primarily Merely a Surname Refusal.

Advisory: Supplemental Register

Learn what it means to receive a Supplemental Register Advisory.

Advisory: Section 2(f) Acquired Distinctiveness

Learn what it means to receive a Section 2(f) Acquired Distinctiveness Advisory.

Failure to Function Refusal: Merely Informational or Commonplace Messages

Learn how to overcome a Failure to Function Refusal for Merely Informational or Commonplace Messages.

Title of a Single Work Refusal

Learn how to overcome a Title of a Single Work Refusal.

My Application Abandoned

Learn how federal trademark applications become abandoned – and how they can sometimes be revived.

and 30 more videos!

About this course

Trademarks 103 represents the bulk of trademark prosecution.

After applying for a trademark, the most common result is receiving an Office Action, a written correspondence from the U.S. Patent and Trademark Office that specifies outstanding “issues”.

In Trademarks 103, each video highlights a particular “issue” from an Office Action. That way, users can focus only on those educational videos that are relevant to resolving the specific issues at hand.

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Trademarks 103

Course Syllabus

About this course

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