Lessons: Trademark

This lesson deals with how trademark protection may be lost by abandonment, i.e. the discontinued use of a mark, the licensing of a mark in gross or an assignment of a mark in gross. This lesson is intended to be used as a supplement to the student's course material. It analyzes several issues that arise from the non-use or limited use of a mark, the licensing or assignment of a mark, as well as the considerations that follow the resumption of use of an abandoned mark.

30-45 minutes

This lesson builds on the concepts that you may have been introduced to in Professor Robert Lind's lesson on the classification of marks, e.g., generic marks, descriptive marks, suggestive marks, arbitrary marks, and fanciful marks. Specifically, this lesson will concentrate on the validity of a mark for trademark protection purposes when the trademark or trade dress is not inherently distinctive. So, after completing this lesson, you should be able to identify and then analyze when a trademark or trade dress may receive trademark protection even though the mark or dress is not inherently distinctive. For your information, in most respects trademarks and trade dress are treated similarly, if not the same, by the Lanham Act. In only a few evidentiary situations will trademarks and trade dress be distinguished; for example, when determining whether a source identifier is inherently distinctive or not. This principle will be explained fully in the Trade Dress lesson.

40 minutes

This lesson explores the Lanham Act provisions governing federal registration of collective marks and certification marks.

30 minutes

This lesson provides an analysis of the levels of distinctiveness and the requirements for the determination of whether a term chosen as a mark is inherently distinctive, must yet acquire distinctiveness, or is incapable of trademark protection regardless of distinctiveness. The lesson is intended as a review of material that is covered early in a Trademark Law course.

40 minutes

This lesson gives an overview of the basics of the European Union's trademark system. The emphasis is on issues of registration and infringement. It often uses a comparative approach, with the U.S. system as a foil. It takes users through both the national systems (via the Trademark Harmonization Directive) and the Community Trademark system. Familiarity with U.S. trademark law is assumed.

1 hour

This lesson explores section 2 of the Lanham Act, 15 U.S.C. § 1052, which prohibits certain types of trademarks from being registered on the Principal Register of the PTO, regardless of whether those marks are protectible under state law or under section 43 of the Lanham Act, 15 U.S.C. § 1125.

45 minutes

This lesson explores how trademark law deals with two specific categories of marks: foreign (non-English) words and people's names. It addresses their ability to function as marks as well as how they should be assessed when determining infringement. The lesson assumes a working familiarity with the "distinctiveness" requirement, the fair use doctrine, and the likelihood of confusion test for infringement. The lesson can be used to (1) provide an overview of one or both of these specialized areas of trademark law or (2) as a means to confirm understanding of the core principles after a class on the subject.

50 minutes

This lesson offers an introduction to the doctrine of functionality, which operates as a defense prohibiting anyone from claiming an exclusive right in functional shapes, elements, or aspects of a product or product packaging. The protectability or registrability of a trademark depends on a factual determination of a design's functionality. The functionality doctrine attempts to weigh the public and private interest in copying design features against a trademark owner's inherently anticompetitive objective to avoid consumer confusion. After completing this lesson, you should be able to analyze when the interest in avoiding confusion will outweigh the interest of free competition and vice versa.

35 minutes

This program takes the student through the basics of a particular area of trademark law — the geographic scope of trademark protection. It includes the general common law principles as enunciated in early Supreme Court cases (Hanover, Rectanus) as well as zone of natural expansion. The program also contains complete coverage of Lanham Act principles including constructive notice, constructive use, section 33 and the limited area defense, concurrent use, and the need for confusion (Dawn Donut). The lesson uses a generally interactive format; the student frequently must answer questions requiring the use of relevant statutory language (which is included in the program) as well as major cases. Graphics, such as maps, pictures and time lines are used throughout the lesson to illustrate and enhance the understanding of the issues presented. This program can be used to teach the basic principles, and can provide a comprehensive review of the area. It is not tied to any particular book.

1 hour

This lesson teaches about the concept of incontestability: what it is, and what benefits it confers on trademark owners. This lesson can be used either for teaching the subject or for review.

30 minutes

This lesson concerns the initial ownership of trademarks. It does not address the assignment or licensing of trademarks, nor the transfer of trademark registrations. This lesson is intended as a review of material covered in the trademark law course.

40 minutes

This lesson introduces you to the rules governing the award of injunctive relief in actions for trademark infringement. In trademark infringement cases, the harm or loss suffered by a plaintiff is often difficult to prove because of the lack of evidence of a causal connection between the harm and the defendant's wrongful conduct. To account for this evidentiary shortfall, the judicial preference in awarding relief in trademark infringement cases is injunctive relief. Despite this judicial preference, monetary remedies remain available for trademark infringement. For a more detailed analysis of monetary remedies for trademark infringement, refer to lesson "Recovery of Damages for Trademark Infringement."

35 minutes

The purpose of this lesson is to serve as an introduction to the rapidly growing area of trade dress law. Several new developments have occurred in this area of the law just in the past five years. Most of these developments deal with the correct balance between protecting the freedom of competitors to copy packaging or design features on the one hand and protecting the appearance or physical features of a product when these packaging or design features operate as indications of source on the other. This lesson will go through the definition of trade dress, review protection requirements for registered trade dress, and conclude with protection requirements for unregistered trade dress.

45 minutes

This lesson covers the "cybersquatting" provisions of the Lanham Act, 15 U.S.C. sec. 1125(d), which grant a cause of action to trademark owners against persons who, with a bad faith intent to profit, register, traffic in, or use domain names that infringe the rights of those trademark owners.

30 minutes

Likelihood of confusion is a core concept in trademark law. This lesson is designed to teach the basics of confusion, as well as some more advanced aspects of the topic. It requires students to work through the multifactor analysis used by courts with specific problems. It also includes a discussion of the different forms of confusion.

45 minutes (not including 30 minute essay)

The purpose of this lesson is to supplement your study of money damage recoveries permitted by The Lanham Act. Damage awards for trademark infringement may receive coverage in either your Remedies course or in your Trademark or Intellectual Property courses. This lesson will serve to introduce, review, and refine the principles you have studied in these respective courses to assist you in determining when damage awards for trademark infringement will be allowed.

35 minutes

This lesson deals with the basics of trademark registration under Section 44 of the Lanham Act. It includes discussions of eligibility under this provision, the value of foreign registrations, issues of priority, and the necessity for use prior to and after registration. It can be used either to learn the subject or for review, but does presume general knowledge of the bases for registration under Section 1 of the Lanham Act.

45 minutes

This lesson is designed to help the student determine the scope of protection given to a trademark. It is designed to supplement material that has been covered in the trademark law course. The determination of the scope of a mark's protection is helpful in the initial selection of a trademark, the trademark registration process, and the enforcement of the trademark. The student will review the concept of related goods by investigating the scope of trademark protection in several scenarios. Students should be familiar with how to select a trademark, register a trademark, and apply the likelihood of confusion test.

30 minutes

This lesson provides an overview of the central role of "use" in United States trademark law. It examines how the policy justifications driving trademark law (1) justify generally requiring use to obtain and maintain trademark rights and related infringement considerations and (2) define sufficient use for those trademark law purposes. It also addresses and explains the few specific exceptions to the use requirement. The lesson assumes a basic knowledge of trademark policy, the distinctiveness classification system and infringement. The lesson can be used as an overview summary at the end of a course or foundationally before a more detailed discussion of (1) acquisition of trademark rights and the related limitations, (2) loss of those rights, or (3) the role of use in federal registration.

1 hour

This lesson explores the concept of service marks, and the similarities and differences between service marks and trademarks.

This lesson assumes that you have already acquired a basic familiarity with the rules that apply to marks that are used on or in connection with the offering of goods. Specifically, you should be familiar with the types of subject matter that may qualify as marks, the spectrum of distinctiveness, and the standard for determining whether a mark has been used in trade (or, for protection under the Lanham Act, in interstate commerce).

30 minutes

This lesson introduces the student to the doctrine and processes involved in interpreting state and federal statutes. Statutes are a critical part of every substantive area of the law, so this is important background for every law student, lawyer and judge.

30 minutes

This lesson introduces the rules governing trademark assignments and licenses under common law and the Lanham Act. It may be used either as review or as the initial introduction to the topic.

30 minutes

This lesson reviews the various defenses to and remedies for dilution available under federal and state law. It can be used either to learn the material for the first time, or to review material already learned in class. The lesson assumes familiarity with several trademark concepts, including dilution (and the prerequisites for dilution protection) and fair use.

1 hour

This lesson has been removed for revisions due to changes in the law.

This lesson explores the definition of trademark dilution, from its origins in the early 20th century, through the current Federal Trademark Dilution Act. Attention is given to both state and federal laws on dilution, and the elements of a claim under both state and federal law.

45 minutes

This lesson covers the types of marks that are deemed eligible for protection under federal and state dilution laws. Although the focus is on eligibility under the Federal Trademark Dilution Act (Lanham Act section 43(c)), there is coverage of the different types of state dilution statutes--those based on the earlier (1964) Model State Trademark Bill (such as Massachusetts), and those based on the federal statute. The lesson also covers the significance of the term "distinctive" in the statutory scheme.

45 minutes

This lesson addresses the trademark doctrine of "exhaustion/first sale." The doctrine governs the trademark owner's continuing rights regarding authentic goods bearing the mark put into the marketplace. The lesson assumes familiarity with trademark's policy objectives, the basic "likelihood of confusion" test for infringement and "fair use," in particular nominative fair use and the problems associated with implied sponsorship. The lesson can be used (1) as an introductory exposure prior to a detailed class on the subject, (2) to reinforce understanding of basic concepts as discussed in class, or (3) as a stand-alone overview of the doctrine's core concerns and rules.

1 hour

This lesson covers the fair use and related "nominative" fair use defenses to claims of trademark infringement. It assumes basic familiarity with trademark policy, the "generic to fanciful" spectrum of distinctiveness trademark classification system, and the likelihood of confusion test for infringement. It can be used (1) as a stand-alone introduction, (2) as a supplement when time restrictions limit in-class coverage, or (3) to reinforce points made during class.

1 hour

This lesson discusses the social policy justifications for the legal protection of trademarks. It provides a general understanding of how those policy objectives derive from market economic principles as well as how they drive the core elements of trademark law. This lesson may be useful preparation for a first class on trademark law or to reinforce points made during a class on trademark policy.

30-45 minutes

This lesson is a follow up to the European Union-Trademark Basics lesson. It presents additional information concerning two topics: "Unusual" marks and Exhaustion of trademark rights (with regard to the latter, there is a comparison with U.S. law in the lesson). At a minimum, users should be familiar with U.S. trademark law and should either review the Basics lesson or be generally familiar with EU trademark law. This lesson may be best used for review and additional learning.

45 minutes

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