Trademark & Branding Law Assignments (PRIOR YEAR SPRING 2016)

ABOUT TRADEMARK & BRANDING LAW ASSIGNMENTS (NOT CURRENT YEAR, THIS IS FROM SPRING 2016)

Assignments.

Initial assignments are posted below. This page will be updated regularly, so come back often. The syllabus can be found here.

Books.

The casebook is free and can be found at http://tmcasebook.org/. Read all statutes cited in the casebook. Most statutes can be found in the statutory supplement, which is also free and can be found at http://web.law.duke.edu/cspd/pdf/IPStatutes2015.pdf.

Projects.

We will do a number of experiential projects, which together will constitute the bulk (75%) of your score. Examples may include searching, applications for registration, infringement analysis, and more. All work product must be entirely your own.

Tentative projects (with expected percentage of class score) are:

Discussion leaders.

Although all class members must be well-prepared, several students will serve as assigned discussion leaders in each class session. For details on participation and discussion leaders, see the syllabus. For a listing of discussion leaders, see here (listing updated Feb. 26). For further guidance on class leading and class discussion, see here (added Jan. 30).

Resources.

A listing of trademark & branding law resources can be found here.

WEEK 1 – JAN. 12 and 14

TUESDAY, JAN. 12: Introduction

THURSDAY, JAN. 14: Distinctiveness (inherent)

WEEK 2 – JAN. 19 and 21

Office hours this week: Tues. 3:30-5:30, Wed. 3:30-5:30. Appointment recommended due to early semester exam review. Out of town Thurs. PM & Friday. See sign-up sheet on office door.

TUESDAY, JAN. 19: Distinctiveness (acquired & genericness)

THURSDAY, JAN. 21: Distinctiveness (genericness & nonverbal marks)

WEEK 3 – JAN. 26 and 28

Office hours this week: Mon. 3:30-5:30, Wed. 3:30-5:30, Thurs. 3:30-5:30, and Fri. 10-noon, 2:45-4PM. Appointment recommended due to early semester exam review. See sign-up sheet on office door.

TUESDAY, JAN. 26: Distinctiveness (nonverbal marks)

  • Casebook, Part I, pp. 117-55 (.pdf/.doc)

THURSDAY, JAN. 28: Distinctiveness (nonverbal marks); bars to protection (functionality)

WEEK 4 – FEB. 2 and 4

Note that discussion leaders for the next month have been posted. See below.

TUESDAY, FEB. 2: Bars to protection: functionality (utilitarian and aesthetic)

THURSDAY, FEB. 4: Bars to protection: (deceptiveness, misdescriptiveness, scandalousness, disparagement, false connection)

WEEK 5 – FEB. 9 and 11

TUESDAY, FEB. 9: Bars to protection: disparagement; Trademark use

  • Read handout with case In re Tam (emailed to class 2/5/16 – let me know if you did not receive).
  • Casebook, Part I, pp. 272-297 (.pdf/.doc)

THURSDAY, 11: The trademark registration process

  • Casebook, Part I, pp. 298-342 (.pdf/.doc)
  • Our leaders will handle the cases and I will discuss trademark applications and Project II.
  • We will also select lawyers for Project II.

WEEK 6 – FEB. 16 and 18

Office hours this week: Tues. 3:45-6:00 PM, Wed. 3:30-5:00 PM, Thurs. 8-10AM.

TUESDAY, FEB. 16: Attend Monday classes

  • Because of the President’s Day Holiday, there is no class today.
  • You should attend your Monday classes instead.

THURSDAY, 18: The trademark registration process

WEEK 7 – FEB. 23 and 25

SUNDAY, FEB. 21: online office hours

  • As noted in class, I’ll have online office hours on Sunday starting appx. 2PM.
  • Nobody is under any obligation to come by, but if you have questions, stop in.
  • The format will be Q&A using Google Hangouts. It’ll be akin to an online TV show with people submitting live questions via Q&A.
  • To attend, you’ll need a Google (Gmail) account, and to click here.
  • I’ll make the session available afterwards as well though its utility will depend on the level of attendance and questioning.

TUESDAY, FEB. 23: Project II due; The territorial extent of trademark rights

THURSDAY, FEB. 25: The actionable use requirement; the likelihood of confusion test

  • Casebook, Part II, pp. 3-6, 19-28 (bottom of page), 34-59 (.pdf/.doc)

SPRING BREAK – WEEK OF MAR. 1 and 3

NO CLASS THIS WEEK – ENJOY SPRING BREAK

Remaining assignments and projects.

Posted Feb. 29 (Leap Day 2016):

  • Tentative assignments for the remainder of the semester have been posted.
  • Tentative class leaders have also been posted for classes through April 21.
  • Updated guidance for class leaders has been posted as well.
  • Check back regularly as the assignments below will be adjusted and appended in light of the projects we will be doing.

WEEK 8 – MAR. 8 and 10

TUESDAY, MAR. 8: Modes of Consumer Confusion: Sponsorship Confusion, Initial Interest Confusion, Reverse Passing Off

THURSDAY, MAR. 10: Trademark dilution

  • Casebook, Part II, pp. 165-187 (.pdf/.doc)
  • On Tuesday, Mar. 8, we talked about the basics of Project III. Today, bring any questions regarding the project you may have to class.

WEEK 9 – MAR. 15 and 17

TUESDAY, MAR. 15: Trademark dilution (cont’d)

  • Casebook, Part II, pp. 188-226 (.pdf/.doc)
  • Project III matters:
    • Carefully Read Tamar Niv Bessinger, Ethics Issues in Searching Trademarks and Offering Opinions, available here. Class leaders need not address this reading, because I will. This reading provides a lot of important and helpful information for Project III on searching, and I expect you to be deeply familiar with it.
    • We will also spend part of the class discussing Project III in further detail, so be sure that: 1) you are already searching; and 2) you are already thinking about how to put together your memo and case file.

THURSDAY, MAR. 17: Cybersquatting

  • Your final opportunity to seek guidance on Project III, so address any questions you may have in class.
  • Casebook, Part II, pp. 226, 239-278 (.pdf/.doc). It is very important to read this assignment carefully because it is directly relevant to future projects.
  • Each of you must be prepared to answer the following questions. You’ll have to search online to find the answers.
    • What is a WHOIS search? How do you do it? Figure it out.
    • Use WHOIS to find out: who is the registrant of nathenson.org? The registrar? The nameserver?
    • Same WHOIS questions re nathenson.net. Same persons?
    • Finally, go to http://network-tools.com/. Run an “express” inquiry on nathenson.org. What did you learn?

WEEK 10 – MAR. 22 and 24

TUESDAY, MAR. 22: Secondary Liability

THURSDAY, MAR. 24: Easter Break

  • Easter Break, no class today

WEEK 11– MAR. 29 and 31

TUESDAY, MAR. 29: Final projects: background knowledge

NOTICES:

No class leaders today. The scheduled class leaders have been rescheduled for April 26.

Project III. As suggested, the due date for Project III has been moved to today. Project III is due due today, Tuesday, Mar. 29 at the beginning of class (2PM EST). Hand your case file (including memo) to me in class in paper form. If you will not be in class, bring it to me personally before class or give it to one of the faculty administrative assistants (Ms. Mariela Torres or Ms. Karla Garcia)

ASSIGNMENT: 

Each of you must be do the following things and be prepared discuss each of them. The goal of these assignments are to learn about the architecture and tech of domain names and the web.

Cease and desist letters: 

1. Do internet searches and find at least two examples of trademark or domain-name oriented cease and desist letters.

2. Be ready to discuss your letters and tell us about them.

Domain ownership, IP addresses, hosts:

1. What is a WHOIS search? How do you do one? Look it up, figure it out.

2. Use WHOIS to find out: who is the registrant of nathenson.org? Who is the domain-name registrar? The nameserver?

3. Same WHOIS questions re nathenson.net. Same persons?

4. Finally, go to http://network-tools.com/. Run an “express” inquiry on nathenson.org. What did you learn?

How web pages work:

1. How do you view the source code of a website? Hint: right-click on a website and then click on “view page source” or a similar link. What do you see? Try it on http://www.stu.edu/law.

2. What is a robots.txt file? Read About the Robots.txt standard, http://www.robotstxt.org/orig.html

3. Look at the St. Thomas University robots.txt file. What does it do?

4. Go to the Internet Archive at http://web.archive.org.  Look at the White House robots.txt file (http://www.whitehouse.gov/robots.txt) from Jan. 19, 2008 (George W. Bush’s last full day in office). Compare the robots.txt file from Jan. 21, 2008 (the day after Barack Obama’s inauguration). How do they differ?

THURSDAY, MAR. 31: Descriptive fair use

  • Casebook, Part III, pp. 3-32 (.pdf/.doc)

WEEK 12 – APR. 5 and 7

TUESDAY, APR. 5: Nominative Fair Use

THURSDAY, APR. 7: Expressive Uses

WEEK 13 – APR. 12 and 14

TUESDAY, APR. 12: Expressive Uses (cont’d)

  • Casebook, Part III, pp. 94-113 (.pdf/.doc)
  • We will also spend significant class time discussing the final project, Project V

THURSDAY, APR. 14: Abandonment

  • Casebook, Part III, pp. 114-141 (.pdf/.doc)

WEEK 14 – APR. 19 and 21

TUESDAY, APR. 19: Assignment in Gross; the First Sale Doctrine

THURSDAY, APR. 21: Right of Publicity

  • Casebook, Part V, pp. 2-6 32-65 (.pdf/.doc)

WEEK 15 – APR. 26 and 28

TUESDAY, APR. 26: Final project discussion

  • We will discuss the final project.
  • This is your final opportunity to discuss and raise questions regarding the final project.

THURSDAY, APR. 28: LAST DAY OF CLASS

  • Combined Project IV (cease-and-desist letter, UDRP complaint, memo) will be due at the beginning of today’s class.
  • We will spend our last class together reflecting on the final project.
  • We will also have the pleasure of a visitor to our class, 2011 STU law grad Francis J. Ciaramella. He practices IP law and you can read his bio here.

Revised Apr. 18, 2016