ABOUT TRADEMARK & BRANDING LAW ASSIGNMENTS
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/IPStatutes2016.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.
Tentative projects (with expected percentage of class score and general due date) are listed below.
- Project I (due Jan. 24 ): create four proposed trademarks (5%)
- Project II (due Feb. 21): prepare a trademark registration application (15%)
- Project III (due Mar. 30 [formerly Mar. 28]): conduct knock-out search with analysis (25%)
- Project IV (due Apr. 27) engage in brand-name enforcement work (30%)
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.
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)
WEEK 2 – JAN. 17 and 19
TUESDAY, JAN. 17: Distinctiveness (acquired & genericness)
- Class leader: Isabela D.
- Casebook, Part I, pp. 37-67 (.pdf/.doc)
- Handout on serving as a discussant and as a discussion leader.
- Handout on distinctiveness and types of trademarks.
- Read details of Project I: Proposed Marks (due Jan. 24)
THURSDAY, JAN. 19: Distinctiveness (genericness & nonverbal marks)
WEEK 3 – JAN. 24 and 26
TUESDAY, JAN. 24: Distinctiveness (nonverbal marks)
- Class leader Mike
- Due today at beginning of class: Project I: Proposed Marks. Please send the short memo to my email at firstname.lastname@example.org. Please also hand in a printed copy of the memo along with your Attribution/Certification form.
- Casebook, Part I, pp. 105-40 (.pdf/.doc)
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
- Here are some handouts we used in class over the past couple of weeks. They are not specifically assigned for today, and are instead collected here for your reference:
- Here’s some articles of interest we discussed in class over the first two weeks
- A Dog’s Purpose and branding
- Is Donald Trump’s brand crumbling or triumphant?
- How Donald Trump Came Up with Make America Great Again
- Trump Singles
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:
- Leader – Isabela
- Today we’ll be discussing the Supreme Court’s upcoming decision in Lee v. Tam. This is a tremendously important trademark and First Amendment case. In preparation, we’ll read the Federal Circuit decision, and you’ll read and listen to the recent oral argument transcript.
- FIRST: Read casebook, Part I, pp. 220-249 (.pdf/.doc). This is the decision that is being reviewed by the Supreme Court.
- SECOND: Read Lee v. Tam oral argument transcript – https://www.supremecourt.gov/oral_arguments/argument_transcripts/15-1293_o7jp.pdf
- THIRD: Listen to Lee v. Tam oral argument audio – https://www.supremecourt.gov/oral_arguments/audio/2016/15-1293
- FINALLY: Also read casebook, Part I, pp. 259-82 (.pdf/.doc)
THURSDAY, FEB. 9: The trademark registration process
WEEK 6 – FEB. 14 and 16
TUESDAY, FEB. 14: USPTO practice
- Class leader: Mandy (switched from Mike)
- Carefully read the assignment for Project II. Familiarize yourself with the resources at the end of the project page. Note (added 2/13): I added some information to the assignment page to help. It’s listed in blue. Most importantly, it provides specific and update info on the client name and address.
- The listing of marks, goods/services, clients, and attorneys can be found here.
- Steps in getting a trademark registration from the USPTO
- TMEP 1401.02 (including (a) & (b): 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 client, mark, and the “raw” description of goods or services. Now you need to refine it.
- Do the TEAS tutorial (do not do any searching at this time).
- 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.
THURSDAY, FEB. 16: The territorial extent of trademark rights
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
SPRING BREAK – FEB. 28 and MAR. 2
NO CLASS THIS WEEK – ENJOY SPRING BREAK
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
THURSDAY, MAR. 9: Trademark dilution
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
- Class leader: Mandy
- New material: Casebook, Part II, pp. 250-80 (.pdf/.doc).
- Project IV background: Read Elements of a cease-and-desist letter a/k/a How Not to be an IP Gorilla
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:
- Do internet searches and find at least two examples of trademark or domain-name oriented cease and desist letters.
- Be ready to discuss your letters and tell us about them.
- 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.
- What is a robots.txt file? Read About the Robots.txt standard, http://www.robotstxt.org/orig.html
- Look at the St. Thomas University robots.txt file. What does it do?
- 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?
- Online enforcement: cease and desist letters:
WEEK 11– MAR. 28 and 30
TUESDAY, MAR. 28: Descriptive fair use
TUESDAY, MAR. 30: Nominative Fair Use
- Class leader: Isabela. She will address the substance-related readings. I will lead discussion on the project-related readings. Class members should be well-prepared on all readings.
- Project III is due due today, Thursday, Mar. 30 at the beginning of class (2PM EST) [revised date]. Hand your case file (including memo) to me in class in paper form. You must also hand in a signed Attribution/Certification form. If you will not be in class, bring it to me personally before class or give it before class to one of the faculty assistants (Mariela, Diana, or Suzie).
- Substance-related readings:
- Casebook, Part III, pp. 29-49 (.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)
- UDRP rules.
- WIPO materials:
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
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
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)