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On April 30, 2014, The National Commission for Certifying Agencies (NCCA) granted accreditation to the NALA Certified Paralegal program for demonstrating compliance with the NCCA Standards for the Accreditation of Certification Programs. NCCA is the accrediting body of the Institute for Credentialing Excellence. The NCCA Standards were created to ensure certification programs adhere to modern standards of practice for the certification industry.  The NALA Certified Paralegal program joins an elite group of more than 120 organizations representing over 270 certification programs that have received and maintained NCCA accreditation. More information on the NCCA is available online at www.credentialingexcellence.org/NCCA

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This page summarizes the Advanced Paralegal Certification course on Trademarks. Use the links below to review the items, register or login to the course. If you have not already registered as a user on the NALA APC web site, click "Register for the Course." If you have already registered for this or another APC course, you have already created a user account, click "Login."

Paralegals who are not seeking the Advanced Paralegal Certification credential are welcome to register and take any APC courses as advanced continuing education programs. CLE credit is available upon completion of the courses from NALA for Certified Paralegals, and from various state CLE programs.

Prerequisite Knowledge Learning Contract Register for the course
Fee:   $250 Members; $300 Non Members

Course Description

This course discusses the detailed steps in procuring, policing, and defending a trademark. We also explain the logic behind the laws and the strategies set forth. The course reviews:

  • Related sections of the Lanham Act and the Trademark Manual of Examining Procedure (TMEP);
  • The jurisdiction of federal and state courts;
  • Strategies, such as selection of venue and Anticybersquatting Consumer Protection Act (ACPA) v. Uniform Domain Name Resolution Policy (UDRP) proceedings; and
  • Protective measures, such as defensive registration and vetting contact information from the WHOIS database

The Trademarks APC course relies on learner participation through case studies, interactive content, and internet research. Upon completion of the course, paralegals will have completed exercises involving:

  • Clearance: Knock-out and Comprehensive Searches
  • Strength of Marks
  • Search Criteria Memorandum
  • Internet Search Resources and Pointers; Industry Resources
  • USPTO Websites: Trademark Electronic Application System (TEAS), Trademark Electronic Search System (TESS), Trademark Document Retrieval (TDR), and Trademark Application and Registration Retrieval (TARR)
  • Application Filing Fees, Definition of Goods and Services
  • Handling USPTO Office Actions
  • Abandonment, “Naked Licenses”
  • Docketing, Receiving a Filing Date
  • Acceptable Specimens
  • Acquired Distinctiveness Doctrine
  • Post-registration Maintenance Duties: Nonuse and Incontestability
  • Madrid Protocol
  • Assignability of Marks, Recording Assignments, and Recording Fees
  • Licenses: Exclusive and Nonexclusive, Territorial Restrictions, and Term
  • No Assignment Clauses, Sales Quota Clauses
  • Related Companies Doctrine
  • Pre-trial Issues: Consumer Surveys, Venue Selection, Motions
  • Litigation: Jurisdiction, Drafting Complaints and Answers, Motions, Defenses
  • Trademark Trial and Appeal Board (TTAB), Inter Partes Proceedings: Concurrent Use, Federal Rules, Summary Judgment, Opposition, Withdrawal, and Appeals
  • Domain Names, Typosquatting, ACPA, and UDRP
  • Ethics

Reading exercises include review and analysis of current articles on:

  • The Lanham Act and Unregistrable Terms
  • Docketing Software
  • Current Trends in International Registrations of Marks
Prerequisite Knowledge

This course is written based on the assumption that paralegals taking and seeking to complete the Advanced Paralegal Certification course on Trademarks have the Certified Paralegal credential and a general understanding of the following:

Trademarks and domain names
Trademarks and domain name terminology
Trademark tools
Research skills

Course Modules

The Advanced Paralegal Certification course on Trademarks consists of successful completion of 11 modules of text, assessments, and assignments.  The modules and their subjects are as follows:

1. Clearance
The initial stages of procuring trademark registration include clearing a mark for use. Clearance is a search and analysis process typically comprised of a “knock-out” search and a comprehensive search. These searches reveal prior use of or intent-to-use similar marks and shed light on the protectability of a mark. This module tracks the clearance process and provides insight to performing search and analysis tasks.
2. Application
After clearing a mark for use, it’s time to apply for federal registration. Paralegals often prepare trademark applications for submittal to the USPTO. Therefore, it’s essential to know the filing requirements and be familiar with the methods of filing. This module identifies the types of applications available and outlines the proper form and content necessary to obtain a filing date and serial number.
3. Prosecution
In this process, the application is reviewed for defects of form and substance. Topics in this module include due diligence, office actions, acquired distinctiveness, correspondence, certificate of mailing, final refusal, appeal, publication, opposition, dividing an application, statement of use, issuance, notice of allowance, abandonment, docketing, and extension of time.
4. Registration Maintenance
During the life of a registered mark, the mark’s owner is responsible for properly using the mark, proving continuous use, claiming incontestability, renewing the mark, and policing against the use of confusingly similar marks. Like registration filings, the USPTO encourages electronic filing of post registration correspondence through the TEAS system. This module covers the paralegal’s involvement in these post-registration maintenance duties.
5. International Registration
This module discusses the filing requirements and procedures for obtaining a Certificate of Extension of Protection through the Madrid Protocol, which is equivalent to registering a trademark in a foreign country. In this module, we focus on requests for extension of protection originating in the United States and briefly discuss requests for extension of protection in the United States originating from other countries.
6. Assignments
Trademark assignment is a transfer of ownership from the trademark owner to another party. In the assignment transaction, the trademark owner is the assignor and the receiving party is the assignee. A valid assignment conveys both the mark and the goodwill of the business in which the mark is used. This module covers the procedures for drafting and recording a valid trademark assignment between the assignor and assignee.
7. Trademark Licensing
This module discusses how to draft a licensing agreement and explores many of the common terms and conditions that appear in licensing agreements. We’ll look at the importance of quality control in monitoring a licensing agreement and discuss the benefits of the related companies doctrine.
8. Litigation
This module focuses on pre-trial issues related to litigation of trademark issues. The issues for litigation and post litigation are similar to corresponding civil litigation issues.
9. Inter Parties Proceedings
The primary functions of paralegals in preparation for and during inter parties proceedings are drafting pleadings and motions, gathering evidence, and docketing. Topics in this module include types of inter parties proceedings, commencement of opposition and cancellation proceedings, discovery, motions, withdrawal and trial procedure.
10. Domain Names
In recent years businesses have increased their use of the Internet for electronic commerce and advertising. This module introduces domain names, explores their viability as trademarks, and discusses the legal implications of misusing trademarks on the Internet.
11. Ethics
Paralegals have an ethical obligation to conduct themselves in accordance with the same standards required of an attorney under the Patent and Trademark Office Code of Professional Responsibility. This module reviews the USPTO rules, as well as other paralegal codes.