Trademark Prosecution
Summer 2016
University of Houston Law Center
100 Law Center Dr.
Houston, Texas 77004
Instruction:
Phone:
Mr. Lee B. Hunt, Adjunct Professor
(832) 215-7172
Email:
COURSE OVERVIEW: lbhunt4@gmail.com
This two-hour course provides hands-on training and instruction on the process of Trademark prosecution, from pre-application searching and client admonishment through the filing of renewal documents ten years after registration. Particular attention will be paid to the bases for application-filings and common refusals. Class discussion will focus on the law, precedent, and the USPTO’s Trademark Manual of
Examining Procedure. The course will also familiarize students with the electronic systems used by the trademark bar for searching databases of current registrations and pending applications, filing electronic applications, and responding to official correspondence issued by the USPTO. Upon completion of this course, students will have the knowledge and understanding required to prosecute a trademark registration for others when licensed to practice law.
BRING A NOTEBOOK AND PENS WITH YOU, AS COMPUTER USAGE WILL BE
LIMITED TO WHEN NEEDED FOR CLASS EXERCISES.
REQUIRED READING: Trademark and Unfair Competition, Law and Policy,
Dinwoodie; Janice, 3rd Edition*** NOTE: The 4 th edition is the most current; we will be using the 3 rd edition because the information will suffice and the book is much cheaper than the current edition.
Trademark Manual of Examining Procedure (Current
Edition). Hard copy is not required, as electronic version available at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/ current/d1e2.xml
.
In re E. I. du Pont de Nemours & Co.
, 476 F.2d 1357, 177
USPQ 563 (C.C.P.A. 1973)
Pro-Football, Inc. v. Amanda Blackhorse et al.
, 115
USPQ2d 1524 (E.D. Va. 2015)
In re Tam, 808 F.3d 1321 (Fed. Cir. 2015)

FIRST DAY Reading: Text Book: Chapter 5, pg. 317- 379.
Cases: In re E. I. du Pont de Nemours & Co.
, 476 F.2d
1357, 177 USPQ 563 (C.C.P.A. 1973)
CLASS PARTICIPATION : Because of the short nature of this course, class attendance is required for the totality of each day.
Further, this class requires participation and active involvement. Fortunately, trademark law is not boring, so I do not anticipate there being a participation problem.
GRADES : Your grade in this course will be based on a final exam, consisting of both short answer questions and essays.
Additionally, the instructor reserves the right to adjust grades based on class-participation.
About the Instructor: Lee B. Hunt is an adjunct professor for the University of
Houston Law Center. He is a graduate of UHLC and is licensed to practice law in Texas. Lee currently works as a trademark examining attorney for the United States Patent and
Trademark Office in Alexandria, Virginia. Before joining the
USPTO, Lee clerked for the Supreme Court of Texas. While attending law school, Lee served as a patrol officer and investigator for Houston Police Department.
If you have questions or concerns outside of class time, please feel free to reach me by phone or at the email address provided.
This course is not affiliated with or presented by the USPTO.

COURSE SCHEDULE
Each day will be split into two-hour blocks with a short break in between. a) Day One
(1) The purpose of trademark law
(2) The spectrum of distinctiveness
(3) Bases of trademark law
(4) Elements of a trademark
(5) Statutory bases for filing and refusing trademarks
(6) Timeline of registration
(7) Sources of trademark regulation b) Day Two: c) Day Three:
(1) Trademark Electronic Search System (TESS),
(2) Trademark Electronic Application System (TEAS)
(3) U.S. Acceptable Identification Of Goods And Services Manual.
(4) Trademark Manual of Examining Procedure (TMEP)
(5) The various portions and requirements of a trademark application.
(6) Filing bases
(7) Specimens (Use based applications)
(1) Refusals under Section 2 of the Lanham Act.
(2) Response options for such refusals.
(3) Students will participate in classroom-based activity focusing on the development of proper classifications and identifications of goods and services, and drafting an identification of goods and services.
(4) Activity will be reviewed and discussed.
(5) Post -registration requirements for trademark maintenance. d) Day Four:
(1) Discussion of response procedure.
(2) In-class activity—Preparing a response to an USPTO-style Office action, official correspondence issued by Trademark Examining Attorney assigned to review trademark applications.
(3) Response discussed and reviewed.
(4) Discussion of In Re Tam and Pro-Football, Inc. vs. Blackhorse
(5) Discussion of the most common errors and mistakes in the registration process.
(6) Comprehensive Review and Discussion of the Final. e) Day Five:
Final Exam