ABOUT TRADEMARK & BRANDING LAW ASSIGNMENTS (NOT CURRENT YEAR, THIS IS FROM SPRING 2016)
Initial assignments are posted below. This page will be updated regularly, so come back often. The syllabus can be found here.
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.
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:
- Project I (due Jan. 21): create three proposed trademarks (5%)
- Project II (due Feb. 23): prepare a trademark application (15%)
- Project III (due Mar. 29): do a knock-out search with analysis (20%)
- Project IV (final case file due Apr. 28) (consolidation of former Projects IV & V): cease-and-desist letter (10%), UDRP complaint with exhibits, memo with analysis (25%)
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).
A listing of trademark & branding law resources can be found here.
WEEK 1 – JAN. 12 and 14
TUESDAY, JAN. 12: Introduction
- Read syllabus
- Casebook, Introduction, pp. 2-31 (.pdf/.doc)
- Supplemental resource (shown in class): Comparison of copyright, trademark, and patent
- Today will be primarily lecture/introduction of trademark & branding law concepts, explanation of the experiential approach to teaching, and introduction to the method of student-led discussion. We will also select discussion leaders for upcoming classes.
THURSDAY, JAN. 14: Distinctiveness (inherent)
- Starting with today’s class, students will lead discussion of the assigned materials. See syllabus for details on discussion leaders, and the listing here naming discussion leaders for each class. I will jump in and out of the discussion as needed to help guide you, to keep things moving along, and to course-correct.
- Casebook, Part I, pp. 5-40 (.pdf/.doc)
- Read details of Project I: Proposed Marks
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)
- Casebook, Part I, pp. 40-74 (.pdf/.doc)
- FYI (Jan. 18), as requested, I added the distinctiveness handout to the website. We’ll update it as we learn more about distinctiveness.
THURSDAY, JAN. 21: Distinctiveness (genericness & nonverbal marks)
- Casebook, Part I, pp. 74-117 (.pdf/.doc)
- Project I: Proposed Marks due in both MS Word and in paper format
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)
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)
- Casebook, Part I, pp. 187-230 (.pdf/.doc)
- Section 2, 15 U.S.C. 1052
- Handout on distinctiveness & non-functionality.
- Note that discussion leaders for the next month have been posted
- Handout on discussion leader guidance.
- FYI, helpful handouts you’ve seen before; on site or updated:
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
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
- It is highly recommended that you attend this class: this will be your opportunity to discuss how to fill out a registration application and to ask any questions. The project is due the next Tuesday at the beginning of class.
- The listing of marks, goods/services, clients, and attorneys can be found here.
- No discussion leaders today; Tanner L. & Julio M. will be moved to first class after Spring break.
- Carefully read the assignment for Project II. Familiarize yourself with the resources at the end of the project page.
- Steps in getting a trademark registration from the USPTO
- International classification listing
- Differences between PLUS, RF, and Regular forms. Use this to determine which form to use.
- TEAS Reduced Fee (RF) form (see PDF sample here)
- Sit down with your assigned mark and the “raw” description of goods or services. Now you need to refine it.
- Do the TEAS tutorial
- Go to Acceptable Identification of Goods and Services Manual (“Acceptable ID manual”). Determine which international class or classes may apply to your goods.
- Also, use the Acceptable ID manual to start drafting your identification of goods and/or services.
- After carefully reading the PDF version of the TEAS Reduced Fee (RF) form, consider whether you need any additional information, or whether you have any questions.
- Be sure to bring to class any questions you may have regarding Project II.
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
- Project II is due today at the beginning of class, hand it in via paper submission
- Casebook, Part I, pp. 343-83 (.pdf/.doc)
THURSDAY, FEB. 25: The actionable use requirement; the likelihood of confusion test
SPRING BREAK – WEEK OF MAR. 1 and 3
NO CLASS THIS WEEK – ENJOY SPRING BREAK
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
- Important class leader info:
- Tentative class leaders and dates for rotations three (starting March 10) and four (starting April 5) have been posted.
- As you know, part of your grade is class participation, and part of your class participation score is serving as a class leader. Now that we have had chances to lead and to see others lead, I will start scoring class leaders beginning with Round 3 (March 10), so be sure to carefully read the updated guidance for class leaders. After each class, I want to meet with class leaders to give them formative feedback on how to further develop discussion-leading skills.
- Reading: Casebook, Part II, pp. pp. 84-113, 145-162 (.pdf/.doc)
- Project III will be due Tuesday, Mar. 29. Details of the project are online, including assigned attorneys, CEOs, and marks as well as scoring guidance. Read them carefully in preparation for today’s class.
THURSDAY, MAR. 10: Trademark dilution
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
- Casebook, Part II, pp. 279-297 (.pdf/.doc). It’s a shortened assignment, in light of the additional load of finishing Project III.
- Read Elements of a cease-and-desist letter a/k/a How Not to be an IP Gorilla
THURSDAY, MAR. 24: Easter Break
- Easter Break, no class today
WEEK 11– MAR. 29 and 31
TUESDAY, MAR. 29: Final projects: background knowledge
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)
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
WEEK 12 – APR. 5 and 7
TUESDAY, APR. 5: Nominative Fair Use
- Class leaders will address the substance-related readings. I will lead discussion on the project-related readings. Class members should be well-prepared on all readings.
- Substance-related readings:
- Casebook, Part III, pp. 32-53 (.pdf/.doc)
- Volvo Trademark Holding AB v. Volvospares/Keith White, UDRP Case No. D2008-1860 (2009), available at http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1860.html.
- Volvo Trademark Holding AB v. Volvospares.com, 703 F.Supp.2d 563 (E.D. Va. 2010)
- Project-related readings:
- Elements of a cease-and-desist letter a/k/a How Not to be an IP Gorilla (previously assigned)
- Uniform Domain Name Dispute Resolution Policy (UDRP) (previously assigned)
- UDRP rules.
- WIPO materials:
THURSDAY, APR. 7: Expressive Uses
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