SYLLABUS
Instructor’s Name: Ralph H. Cathcart
E-mail: ralphcathcart@aol.com
Telephone Number: (212) 708-1920
Secretary: Ms. Marcela Fernandez,
Room 216,
Tel: (516) 463-4761
Roosevelt Hall
Room 205
(Tuesdays)
6:10 p.m. – 8:00 p.m.
TRADEMARKS COURSE SYLLABUS (SPRING 2015)
Purpose of the Course: The purpose of this course is to provide students with
theoretical, substantive and practical knowledge about trademark law. By the end of the
course, you should be able to identify trademark issues and have a solid understanding of
U.S. trademark law and practice.
Course Materials: During the semester we will be using the following course materials
amongst others: published trademark law decisions, the Lanham Act, Federal Register,
and various articles and handouts.
Classes: This class is scheduled to meet for two hours per week, on Tuesdays at 6:10
p.m.
Attendance and Preparation: Students are expected to attend classes regularly and to
prepare for classes conscientiously. A “sign in” sheet will be circulated each class. If
you miss class frequently or are unprepared several times, your grade may be lowered.
Alternatively, I may ask the Registrar to withdraw you from the course. If an absence is
unavoidable for a compelling reason or if you have missed a class due to illness or
emergency, please send me an e-mail explaining and substantiating a requested excusal.
Lateness: Students are expected to be on time to class. However, it is better to come to
class late than not at all. You may walk in late if you have a good reason, as long as you
do not abuse this privilege. Your grade may be lowered if you are habitually tardy with
no acceptable explanation.
“TWEN” (The West Education Network): I may set up a course page for this class on
TWEN. TWEN gives me a quick way to reach all of you with any announcements,
syllabus changes, handout materials, interesting links, etc. I may also post assignments
on the class assignment page on the law school’s website.
Final Grade for the Course: Final grade for the course will be as follows: 10% class
preparation and participation and 90% for an in class exam.
Final Exam: The final exam shall be closed book, in class and will consist of short
answers, multiple choice questions and essay type questions. I will provide more
information about the final exam later in the semester.
Computer Policy: Computers are to be used during class for taking notes and no other
purpose. They are not to be used to “surf the net” or sending e-mails or instant messages.
Violations of this rule may lead to you being prohibited from using a laptop during class.
Communications: The best way to communicate with me is by e-mail. I will get back
to you within 24 hours, if at all practicable. While I do not maintain regular office hours,
if you need to speak with me in person you can set up an appointment either before or
after class with me or through my assistant Ms. Marcela Fernandez.
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GENERAL TOPICS/READING LIST
I
OVERVIEW OF INTELLECTUAL PROPERTY
Overlap of trademarks, copyrights and patents.
Lecture and handouts.
II
WHAT IS A TRADEMARK?
Handout.
Lanham Act of 1946, § 2, 15 U.SC. § 1052, 1053 and 1054.
Lanham Act of 1946, § 45, 15 U.SC. § 1127.
III
TRADE DRESS, COLOR MARKS AND SOUND MARKS
Two Pesos Inc. v. Taco Cabana Inc., 505 U.S. 763, 23 U.S.P.Q.2d 1081 (1992).
Wal-Mart Stores, Inc. v. Samara Brothers Inc., 529 U.S. 205, 120 S. Ct. 1339, 54
U.S.P.Q.2d 1065 (2000).
Qualitex v. Jacobsen Products Co., 514 U.S. 159, 115 S. Ct. 1300 (1995), 34 U.S.P.Q.2d
1161.
Christian Louboutin et. al v. Yves Saint Laurent American Holdings, Inc. et. al, 646 F.3d
206 (2d. Cir. 2012)
IV
SECONDARY MEANING
Lecture.
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V
ACQUISITION OF TRADEMARK RIGHTS
Common law rights, Federal and State statutory rights.
Lecture.
VI
PRIORITY
Priority as Between Registered Users and Registered and Unregistered Users:
Lanham Trademark Act of 1946, § 7(a)-(c), 15 U.S.C. § 1057(a)-(c).
Lanham Trademark Act of 1946, § 22, 15 U.S.C. § 1072.
Priority Between Intent to Use Application Filer and Actual User of Similar or Identical
Marks.
WarnerVision Entertainment, Inc. v. Empire of Carolina Inc., 101 F.3d 259, 40
U.S.P.Q.2D 1855 (2d. Cir. 1996).
VII
U.S. TRADEMARK APPLICATIONS, REGISTRATIONS
Different Types of Applications (Use Based/Intent to Use):
Lanham Trademark Act of 1946, § 1, 15 U.S.C. § 1051.
Different Types of Marks (Trademarks, Service Marks, Collective Membership Marks,
Certification Marks).
Principal Register vs. Supplemental Register:
Lanham Trademark Act of 1946, § 7(c), 15 U.S.C. § 1057(c).
Lanham Trademark Act of 1946, § 8(a), 15 U.S.C. § 1058(a).
Lanham Trademark Act of 1946, § 9(a), 15 U.S.C. § 1059(a).
Lanham Trademark Act of 1946, § 22, 15 U.S.C. § 1072 (as above).
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Lanham Trademark Act of 1946, § 33(a), 15 U.S.C. § 1115(a).
Lanham Trademark Act of 1946, § 23, 15 U.S.C. § 1091.
Lecture on differences, advantages and disadvantages of Principal Register and
Supplemental Register.
Marks Entitled to Registration:
Lanham Trademark Act of 1946, § 2, 15 U.S.C. § 1052.
In re: E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973), 177 U.S.P.Q. 563
Functionality:
Lanham Trademark Act of 1946, § 2(e)(5), 15 U.S.C. § 1052(e)(5).
Lanham Trademark Act of 1946 § 14(3), 15 U.S.C. § 1064(3).
Lanham Trademark Act of 1946 § 23(c), 15 U.S.C. § 1091(c).
Handouts.
Incontestability:
Lanham Trademark Act of 1946, § 15, 15 U.S.C. § 1065.
Lanham Trademark Act of 1946, § 33(b), 15 U.S.C. § 1115(b).
Madrid Protocol.
Doctrine of Foreign Equivalents
Tatuaje Cigars, Inc. v. Nicaragua Tobacco Imports, Inc., Opposition No. 91/185,180
(TTAB 2007)
VII
LOSS OF TRADEMARK RIGHTS.
Abandonment/Cancellation.
Constructive Abandonment, Lanham Act rebuttable presumption.
Lanham Trademark Act of 1946, § 45, 15 U.S.C. § 1127.
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Assignment in Gross or Naked Licensing.
Fraud.
In re: Bose Corp., 91 U.S.P.Q.2d 1938 (Fed. Cir. 2009).
Nationstar Mortgage LLC v. Mujahid Abmad, 112 U.S.P.Q.2d 1361 (TTAB 2014)
Lack of Bonafide Intent to Use
Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeyinyagi Tarim Statis Kooperatifleri
Birligi, 99 U.S.P.Q.2d 1545 (TTAB 2011)
IX
TRADEMARK TRIAL AND APPEAL BOARD.
Federal Register, Vol. 72, No. 147 – Rules and Regulations.
Opposition and Cancellation Proceedings.
Lanham Trademark Act of 1946, §§ 13, 14 and 17, 15 U.S.C. §§ 1063, 1064 and 1067.
X
INFRINGEMENT/UNFAIR COMPETITION.
Lanham Trademark Act of 1946, § 46, 15 U.S.C. § 1114(1); § 43(a).
Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492; 128 U.S.P.Q. 411 (2d Cir.
1961).
Domain names.
XI
DILUTION
Handout.
XII
REMEDIES
Lanham Trademark Act of 1946, §§ 32-38, 15 U.S.C. §§ 1114-1120, including
injunctions, actual damages, disgorgement of profit, statutory damages, attorney’s fees.
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