Trademark Practice and Procedure

This course introduces the fundamentals of trademark counseling and trademark practice before the United States Patent and Trademark Office (PTO). It focuses on the lifecycle of a trademark, from clearance, to application/registration, through to protection and enforcement. The course will cover the various types of U.S. trademarks, searching of trademarks, drafting of trademark applications, filing of the trademark applications with the PTO, and prosecuting of trademark applications before the PTO, as well as adversarial proceedings (both before the PTO and in court). Students will become familiar with the statutes, PTO regulations, decisional law, customs and practice governing the drafting and prosecution of trademark applications. Students will also become knowledgeable of the strength and enforceability of trademarks and how to counsel clients on the availability and registrability of marks as well as whether trademark rights are being violated and when and how to enforce one’s trademark rights. In addition, students will learn how to search the PTO trademark database and how to analyze comprehensive trademark reports to determine whether a trademark is available. Other topics to be covered include practice and procedure for foreign trademark clearance and filing, including under the Madrid Protocol, maintenance of trademarks, appealing adverse Examiner decisions and domain name disputes. The course format will combine formal lecture presentations and case analysis with skill-based practice exercises/assignments to provide students the opportunity to develop searching strategies, opinion drafting experience, and fundamental trademark application drafting and prosecuting skills.