Each module is a self-paced educational program offering study materials, relevant case law, self-assessment quizzes (Q&A), as well as substantive assignments accompanied by model answers. Students will have access to a trademark agent who will answer questions and provide guidance in “Ask the Expert” format.
Who should participate
- Trademark agent trainees (1 year minimum experience)
- Trademark agents, in house counsel and lawyers looking to update their skills
- Trademark portfolio managers who wish to increase their knowledge
NEW - PREPARING EVIDENCE IN TRADEMARK OFFICE PROCEEDINGS MODULE
This Preparing Evidence in Trademark Office Proceedings Module is intended to assist participants with understanding the requirements in the filing and preparation of Affidavits in trademark proceedings. By completing this course, participants will be equipped with basic knowledge required to assist clients with preparing and filing evidence at the Trademark Office.
- Understanding the purpose and necessities for filing an Affidavit.
- Gaining practical knowledge of the structure, content and format of Affidavits.
- Understanding the evidence requirements in an Affidavit for Opposition and Section 45 proceedings before the Trademark Office.
- Understanding the formalities and technical requirements for filing of Reply Evidence, Additional Evidence, Cross-examinations and Appeals.
- Learning how to apply these principles in any proceeding before the Trademark Office.
EXAMINERS’ REPORTS MODULE
This Examiners’ Reports: Navigating and Responding to Trademark Objections Module is intended to assist participants with understanding and responding to trademark Examiners' reports on a variety of topics. By completing this course, participants will be equipped with the fundamental knowledge required to assist applicants with bringing a trademark application to approval.
- Understanding the anatomy of an Examiner’s report and identifying deadlines
- Gaining practical knowledge on a variety of topics to better assist applicants with bringing a trademark application to approval in a cost effective and efficient manner
- Handling formality issues, including description of goods and services and Nice Classification issues
- Understanding registrability issues and potential options to overcome those issues
- Reviewing confusion factors and applying them in response to relevant objections
- Gaining knowledge in the “not inherently distinctive” objections and how to navigate around such objections
- Learning how to apply legal principles, formulate arguments and effectively communicate with trademark examiners
Section 45 module
This Section 45 Module will provide you with an overview of the legal principles surrounding Section 45 proceedings, as well as the practical skills required to successfully defeat or defend a Canadian trademark registration in summary cancellation proceedings.
- Advise your client on why and when to consider Section 45 proceedings and when to consider settlement
- Apply the Trademarks Office Practice Rules and the relevant sections of the Trademarks Act and Trademarks Regulations, with particular focus on statutory use requirements
- Understand the various stages of a Section 45 proceeding
- Prepare documents relevant to a Section 45 proceeding including registrant’s evidence, a requesting party’s and registrant’s written submissions, and oral arguments
- Determine the threshold that must be met to excuse non-use for reasons of special circumstances
- Apply relevant case law
This Opposition Proceedings Module will provide an overview of the legal principles surrounding opposition proceedings, as well as the practical skills required to prosecute or defend an opposition.
- Develop a plan of action for your client based on his/her needs including when and why opposition should be considered and when and why to consider settlement
- Identify and apply various grounds of opposition and obtain familiarity with the Trademark Office Practice Rules and the relevant sections of the Trademarks Act and Trademarks Regulations
- Develop an understanding of the various stages of an opposition
- Develop an understanding of relevant case law
- Obtain the knowledge and skills required to prepare documents relevant to an opposition proceeding including the statement of opposition, counterstatement and affidavits
- Develop and apply techniques required for the preparation of and attendance at cross examination and oral hearings including familiarity with relevant case law
Financial aid may be available for students whose tuition fees are not paid by an employer. Applicants will be considered on the basis of their annual income. Please contact the IPIC office at firstname.lastname@example.org or 613-234-0516.
A refund will be granted up to one week after beginning the course, less a $50 cancellation fee. Substitutions will be considered.