Trademark & Branding Law Assignments

ABOUT TRADEMARK & BRANDING LAW ASSIGNMENTS

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/IPStatutes2016.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.

Tentative projects (with expected percentage of class score and general due date) are listed below.

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 Jan. 23). For further guidance on class leading and class discussion, see here.

Resources.

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

WEEK 1 – JAN. 10 and 12

TUESDAY, JAN. 10: Introduction

  • Read syllabus
  • Casebook, Introduction, pp. 2-27 (.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.

THURSDAY, JAN. 12: Distinctiveness (inherent)

  • Class co-leader: Jacqueline
  • Casebook, Part I, pp. 5-37 (.pdf/.doc)
  • Note: if you know of any dates when you will be absent from class, please let me know now so that I do not schedule you to be a class leader on that day.

WEEK 2 – JAN. 17 and 19

TUESDAY, JAN. 17: Distinctiveness (acquired & genericness)

THURSDAY, JAN. 19: Distinctiveness (genericness & nonverbal marks)

  • Class leader: Tyler
  • Casebook, Part I, pp. 68-105 (.pdf/.doc)

WEEK 3 – JAN. 24 and 26

TUESDAY, JAN. 24: Distinctiveness (nonverbal marks)

THURSDAY, JAN. 26: Distinctiveness (nonverbal marks); bars to protection (functionality)

WEEK 4 – JAN. 31 and FEB. 2

HANDOUTS WE’VE USED AND PAGES I’VE SHOWN

TUESDAY, JAN. 31: Bars to protection: functionality (utilitarian and aesthetic)

  • Class leader – Anabell
  • Note – Mandy will continue discussing the law of functionality (from last Thursday’s class). All attorneys are expected to be well-prepared to discuss these cases (from Jan. 26) as well as the new materials assigned for Jan. 31. In particular, you need to understand the differences between aesthetic and utilitarian functionality as discussed in TrafFix. You should also re-review the discussion of functionality in Qualitex (from earlier in the casebook). You should have hard copies of all these cases with you.
  • Section 2, 15 U.S.C. 1052. Read the statute carefully.
  • Casebook, Part I, pp. 169-206 (.pdf/.doc)
  • Handout on distinctiveness & non-functionality
  • Note (added Jan. 27): I’ve posted a draft of Project 2 online.

THURSDAY, FEB. 2: Bars to protection: (deceptiveness, misdescriptiveness, scandalousness, disparagement, false connection)

WEEK 5 – FEB. 7 and 9

TUESDAY, FEB. 7: Bars to protection: disparagement; Trademark use

  • Reminders from previous class:
    • Be sure that you have a marked-up hard copy of Section 2 (15 U.S.C. 1052) as previously assigned. You will need to understand this statute well to succeed with project III (which will be a trademark search and a memo). In particular, which types of marks are absolutely barred from registration? Which ones are registrable with secondary meaning? What is the policy underlying the various statutory bars in Section 2?
    • We’ll also talk about some of the pending TRUMP marks such as TRUMPCARE (TSDR application info here) as well as the previously filed and abandoned application for OBAMA BIN LADEN (TSDR application info here). If you were the examining attorney, which parts of Section 2 might you cite to refuse registration to these marks?
  • New material below:

THURSDAY, FEB. 9: The trademark registration process

WEEK 6 – FEB. 14 and 16

TUESDAY, FEB. 14: USPTO practice

THURSDAY, FEB. 16: The territorial extent of trademark rights

  • Class leader: Mike (switched from Mandy)
  • Casebook, Part I, pp. 322-58 (.pdf/.doc)

WEEK 7 – FEB. 21 and 23

TUESDAY, FEB. 21: Project II is due

  • No class today; go to your Monday classes.
  • However, Project II is due today. Turn it in by 4:30 PM EST either to me in person or to the faculty admin assistants & receptionist: Mariela, Diana, or Suzi. Turn in a well-organized paper file with along with your filled-out and signed Attribution/Certification form.

THURSDAY, FEB. 23: The actionable use requirement; the likelihood of confusion test

  • Class leader: Anabell
  • Casebook, Part II, pp. 3-6, 17-25 (up to end of carryover paragraph), 30-52 (.pdf/.doc)

SPRING BREAK – FEB. 28 and MAR. 2

NO CLASS THIS WEEK – ENJOY SPRING BREAK

Remaining assignments and projects.

Posted Feb. 28:

  • Tentative future assignments will be posted shortly.
  • Check back regularly as the assignments below may be adjusted and appended in light of the projects we will be doing.

WEEK 8 – MAR. 7 and 9

TUESDAY, MAR. 7: Modes of Consumer Confusion: Sponsorship Confusion, Initial Interest Confusion, Reverse Passing Off

  • Class leader: Jacqueline
  • Casebook, Part II, pp. pp. 75-97, 126-44 (.pdf/.doc)

THURSDAY, MAR. 9: Trademark dilution

  • Class leader: Isabela
  • Carefully read 15 USC 1125(c)
  • Casebook, Part II, pp. 144-65 (.pdf/.doc)
  • Details on Project III is online. It will be due Tuesday, Mar. 28. Review it and be prepared to present your questions about what you will be doing.

WEEK 9 – MAR. 14 and 16

TUESDAY, MAR. 14: Trademark dilution (cont’d)

  • Class leader: Tyler
  • Casebook, Part II, pp. 166-201 (.pdf/.doc)
  • Re Project III:
    • Bring preliminary results of your search to class. Be prepared to discuss your search strategy and your preliminary findings.
    • 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 everyone to be deeply familiar with it.

THURSDAY, MAR. 16: Cybersquatting

  • Class leader: Mike
  • Reading: carefully read 15 USC 1125(d)
  • Reading: Casebook, Part II, pp. 201, 213-249 (.pdf/.doc). It is very important to read this assignment carefully because it is directly relevant to Project IV.
  • Activity: Each of you must be prepared to answer the following questions. They are directly relevant to the last assignment in April, Project IV. You’ll have to search online to find the answers. The goal is to learn about the domain name system (DNS):
    • What is a WHOIS search? How do you do it? Google it. Figure it out. Find a good WHOIS provider. Be prepared to tell us the URL.
    • Use a WHOIS provider 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. 21 and 23

TUESDAY, MAR. 21: Secondary Liability

THURSDAY, MAR. 23: Project IV background knowledge

  • Class leader: Anabell
  • Your final opportunity to seek guidance on Project III, so address any questions you may have in class.
  • Project IV activity: Each of you must be do the following things and be prepared discuss each of them. The goals are to learn 1) about online enforcement; and 2) to learn about the technology underlying the Worldwide Web (WWW).
    • Online enforcement: 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.
    • DNS/WWW:
      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. Use the Archive’s Wayback Machine to look at the White House robots.txt file (http://www.whitehouse.gov/robots.txt) from Jan. 19, 2009 (George W. Bush’s last full day in office). Then look up the robots.txt file from Jan. 21, 2009 (the day after Barack Obama’s inauguration). How do they differ?

WEEK 11– MAR. 28 and 30

TUESDAY, MAR. 28: Descriptive fair use

  • Class leader: Jacqueline
  • Casebook, Part III, pp. 3-28 (.pdf/.doc)

TUESDAY, MAR. 30: Nominative Fair Use

WEEK 12 – APR. 4 and 6

TUESDAY, APR. 4: Nominative use

  • Class leader: Isabela
  • As noted in Thursday’s class, last Thursday’s assignment shifted to today. Look to March 30 assignment above.
  • Further note that leaders have been bumped forward one class. Please let me know ASAP if that presents any conflicts.

THURSDAY, APR. 6: Expressive Uses

  • Class leader: Tyler
  • Casebook, Part III, pp. 50-88 (.pdf/.doc)
  • Review Project IV (beta made available Apr. 3, be sure to have reviewed it for today’s class).

WEEK 13 – APR. 11 and 13

TUESDAY, APR. 11: Expressive Uses (cont’d)

  • Class leader: Mike
  • Casebook, Part III, pp. 88-106 (.pdf/.doc)
  • We will also spend significant class time discussing Project IV
  • Per 4/9/17 email, make sure you do the following:
    • You should have received a PDF with the client’s trademark registrations
    • The email also gives instructions on how to access the firm intranet
    • Review the domain name mentioned in the email. Be sure to document it and see what else you can figure out.

THURSDAY, APR. 13: No class

  • Easter break, no class!

WEEK 14 – APR. 18 and 20

TUESDAY, APR. 18: Abandonment

  • Class leader: Mandy
  • Casebook, Part III, pp. 107-131 (.pdf/.doc)
  • By April 19, you should have drafted and transmitted your cease-and-desist letter to the “approved” email address.

THURSDAY, APR. 20: Assignment in Gross; the First Sale Doctrine

  • Remaining classes will be devoted to finishing assigned materials and preparing for Project IV. No further leader responsibilities.
  • We will also be meeting individually this week.
  • Casebook, Part III, pp. 131-154 (.pdf/.doc)

WEEK 15 – APR. 25 and 27

TUESDAY, APR. 25: Project discussion

  • No reading assignment.
  • Class will be devoted to any remaining Project IV discussion.

THURSDAY, APR. 27: Final project discussion

  • Last day of class
  • 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.

Last revised Apr. 9, 2017 (supplementing project IV info)