Prosecuting Trademark Applications

SLN #: 74361
Course Prefix: LAW-791
Course Section: 021
Credit Hours: 3
Instructor(s): Sapp
Course Books: View List of Books

Course Description:
This course focuses on the application process before the United States Patent and Trademark Office (“USPTO”) for trademark registrations. Included within the scope of this course will be considerations to be evaluated prior to commencing the application process, including pre-application trademark searches and evaluating marks for registrability, bases for seeking registration, priority of use, priority of application, use in interstate commerce, and specimens of use. This course is designed to follow a trademark application from preparation through to registration on the Principal Register. Attention will be given to the formal, procedural, and substantive requirements for trademark registration, the examination process, possible bases for initial refusal, strategies for responding to non-final office actions, final office actions, petitions to the Director, and appeals to the Trademark Trial and Appeal Board. The course focuses on practical skills needed to successfully prosecute applications to registration before the USPTO, including drafting responses to office actions, developing the record, drafting briefs for appeals to the Trademark Trial and Appeal Board, and presenting oral arguments before the Trademark Trial and Appeal Board.

The course also necessarily addresses substantive areas of trademark law, which often provide a basis for refusal of registration, including that a mark is generic, merely descriptive, misdescriptive, geographically descriptive, contains scandalous matter, or that a mark is likely to cause confusion with an existing mark or prior application. Therefore, a basic understanding of intellectual property law is recommended but not essential.

Additional Information:
Credit Hours: 3
Grading Option: Letter Grade Only
Written Assignment: Yes, approximately 5 assignments throughout the semester
Graduation Writing Requirement: No
Flexible Writing Requirement: Yes
Skills Requirement: No
Experiential Learning: No
Seminar: No
Prerequisite: A basic understanding of intellectual property law is recommended but not essential
Special Withdrawal Course: No
Limited Enrollment Number: 15
Final Exam Given: No
Paper Or In-Class Presentation: Possibly
Attendance Policy: Per Statement Of Student Policies
Teaching Method: In Person

* The law school has a policy that Is used To calculate credit hours. Please see the Statement of Student Policies.