Chapter 1 THE ATTORNEY-CLIENT RELATIONSHIP IN TRADEMARK CASES
- §1.01 Trademark Representation
- §1.02 The Initial Meeting
- §1.03 Client Conflicts
- §1.04 The Retention Letter
- §1.05 Fees in Trademark Matters
Chapter 2 TRADEMARK CLEARANCE
- §2.01 Marks in Business and Law
- §2.02 What Can Be Registered as a Mark
- §2.03 The Importance of Trademark Clearance
- §2.04 Pre-Search Review of the Mark
- §2.05 Trademark Searches
- §2.06 Use of Trademark Symbols: TM, SM, and ®
Chapter 3 REGISTRABLE MARKS
- §3.01 Introduction
- §3.02 Types of Registrable Marks
- §3.03 Basis for Registration
- §3.04 The Trademark Registers
- §3.05 Composition of the Mark
Chapter 4 THE TRADEMARK APPLICATION
- §4.01 Applying for a Trademark Registration
- §4.02 The Written Application
- §4.03 The Drawing
- §4.04 Specimens, Documents, and Payment to Complete Filing Examples
Chapter 5 FILING AND COMMUNICATING WITH THE OFFICE
- §5.01 Contact Information for Filing Correspondence
- §5.02 Identification of the Communication
- §5.03 Signature Requirements
- §5.04 Delivery to U.S. Patent and Trademark Office
- §5.05 Payment of Fees
- §5.06 Postcards and Other Acknowledgments of Receipt
- §5.07 Maintenance of Patent Office Records
- §5.08 General Trademark Information
Chapter 6 POST-FILING ACTIVITIES
- §6.01 Post-Filing Activities by the Office
- §6.02 Post-Filing Activities by the Applicant
- §6.03 Post-Filing Activities by Third Parties
Chapter 7 THE EXAMINATION PROCESS
- §7.01 The Office Action
- §7.02 Period in Which to Respond
- §7.03 Forwarding of the Office Action to the Applicant
- §7.04 Applicant Initiated Interviews with an Examining Attorney
- §7.05 Applicant's Response
- §7.06 Examination After the First Office Action
- §7.07 Verification of Use in an Intent to Use Application
- §7.08 Division
Chapter 8 EXAMINING ATTORNEY'S REQUIREMENTS
- §8.01 The Nature of the Examining Attorney's Requirements
- §8.02 Insufficient Information to Examine the Application
- §8.03 Classification of Goods and Services
- §8.04 Identification of Applicant
- §8.05 Identification of Goods or Services
- §8.06 Use in Commerce
- §8.07 Section 44 Applications
- §8.08 Use of the Mark Was or Is by Other than Applicant
- §8.09 Mode or Manner in Which the Mark Is Applied
- §8.10 Acquired Distinctiveness
- §8.11 Significance in a Foreign Language or in the Trade
- §8.12 Name, Portrait, or Signature of an Actual Person
- §8.13 Disclaimers
- §8.14 Related Registrations
- §8.15 Appointment of a Domestic Representative
- §8.16 Appointment of Counsel
- §8.17 Verification
- §8.18 Signature
- §8.19 Amendment to Supplemental Register
- §8.20 Drawings
- §8.21 Specimens
- §8.22 Fees
Chapter 9 REFUSALS BY THE EXAMINING ATTORNEY
- §9.01 In General
- §9.02 Generic Name of the Goods or Services
- §9.03 Merely Descriptive
- §9.04 Geographically Descriptive
- §9.05 Deceptively Misdescriptive and Deceptive
- §9.06 Geographically Deceptively Misdescriptive
- §9.07 Geographical Name for Wines and Spirits
- §9.08 Use of Name, Symbol, or Device of Organization Prohibited by Statute
- §9.09 Immoral or Scandalous Matter
- §9.10 Disparages, Falsely Suggests a Connection, or Brings Into Contempt or Disrepute a Person, Institution, Belief, or National Symbol
- §9.11 Flag, Coat-of-Arms, or Other Insignia of the United States, State, Municipality, or Foreign Nation
- §9.12 The Name, Portrait, or Signature Identifying a Particular Living Individual or a Deceased President of the United States During the Life of His Widow
- §9.13 Primarily Merely a Surname
- §9.14 Nonownership of the Mark
- §9.15 Proposed Mark Does Not Function as a Trademark or Service Mark
- §9.16 Unlawful or Improper Use in Commerce
- §9.17 Likelihood of Confusion, Mistake, or Deception
- §9.18 Phantom Marks
- §9.19 Foreign Equivalent Marks
Chapter 10 POST-PUBLICATION ACTIONS AND AMENDMENTS
- §10.01 Actions After Publication
- §10.02 Amendments After Publication
Chapter 11 PETITIONS AND APPEALS
- §11.01 Petitions to the Commissioner
- §11.02 Ex Parte Appeals to the TTAB
Chapter 12 INTER PARTES PROCEEDINGS
- §12.01 Nature of Inter Partes Proceedings
- §12.02 Oppositions
- §12.03 Cancellation of Registrations
- §12.04 Concurrent Use Registration Proceedings
- §12.05 Interferences
Chapter 13 REGISTRATION AND POST-REGISTRATION MAINTENANCE
- §13.01 Issuance of Registration
- §13.02 Amendment of Registrations
- §13.03 Duration of the Registration
- §13.04 Affidavit of Use Under Section 8
- §13.05 Affidavit of Incontestability Under Section 15
- §13.06 Renewal
- §13.07 Surrender of Registration for Cancellation
- §13.08 Registration of Trademark with U.S. Customs
Chapter 14 ASSIGNMENT OF OWNERSHIP OF THE MARK
- §14.01 Assignment of Applications and Registrations
- §14.02 Recording a Trademark Assignment
Chapter 15 MADRID PROTOCOL
- §15.01 U.S. Trademark Owners
- §15.02 Extension to the United States by Non-U.S. Trademark Owner
- §15.03 Communications with the International Bureau of WIPO
Chapter 16 TRADEMARK LICENSING
- §16.01 Licenses
- §16.02 Trademark Licenses
- §16.03 Trademark License v. Franchise Agreement
- §16.04 What is Trademark Licensing
- §16.05 History and Reasons for Trademark Licensing
- §16.06 Licensing Plan of Attack
- §16.07 The License Agreement
- §16.08 Common Trademark License Agreement Clauses and Terms
Appendices
Index
