Trademark Law – Fall 2009

Reading and Class Assignments

How to read the Syllabus: Except as noted below, each assignment below corresponds tentatively to one class period, though the amount of material to be covered in class, the order of the assignments, and/or the contents of a particular assignment may be changed by prior announcement. Note, for example, that we will have more class meetings than there are assignments. I will make every effort to incorporate new developments in trademark law into the Syllabus, where appropriate.

Within each assignment, the Syllabus notes the principal case(s) covered in the text. Within each assignment, the Syllabus notes the principal case(s) covered in the text. For many of the assignments, the Softcover Supplement contains additional material that students are expected to read. Supplemental cases contained in the Softcover Supplement are included in the list of principal cases. For some assignments, other required supplemental cases have been posted online at the Course Information page; those cases are separately identified in each assignment.

The page numbers listed below under “Casebook” refer to Graeme B. Dinwoodie & Mark D. Janis, Trademarks and Unfair Competition: Law and Policy (Second Edition, 2007).

“Softcover Supplement” refers to Graeme B. Dinwoodie & Mark D. Janis, Trademarks and Unfair Competition: Law and Policy Case and Statutory Supplement (2009-2010).

Each assignment below corresponds tentatively to one class period, though the amount of material to be covered in class, the order of the assignments, and/or the contents of a particular assignment may be changed by prior announcement.

For most of the assignments, the Softcover Supplement contains additional material that you are expected to read. For some assignments, other required supplemental cases or materials have been posted online. Those cases are separately identified in each assignment. The required supplemental online materials can be downloaded below and at the Course Information page.

In addition to the assigned readings, where a case or other material refers to the Lanham Act (Title 15 of the United States Code), students are responsible for locating and reading the section(s) of the Act to which the text refers, either in the Casebook or in the Softcover Supplement. A free, online version of the Lanham Act is online here.

For several of the units of reading, optional law review articles are included. Some of these are relatively short. Some are quite long. Reading some or all of them will give students a deeper picture of the current state of trademark law and policy than students will get by focusing on appellate cases and the statute alone. All of the articles are available via the University of Pittsburgh — Trademark Law course page on TWEN, at Westlaw.

I. Foundations and Purposes of Trademark and Unfair Competition Law

Optional: Glynn S. Lunney, Jr., Trademark Monopolies, 48 Emory L.J. 367 (1999)

 II. Trademarks at the Intersection of Law and Business

III. Creation of Trademark Rights

Optional: Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark Law, 84 Iowa L. Rev. 611 (1999)

  • Class 6: Distinctiveness. Casebook 43-63 [plus Softcover Supplement]
  • Class 7: Distinctiveness. Casebook 64-91 [plus Softcover Supplement]
  • Class 8: Distinctiveness. Casebook 91-123
  • Class 9: Subject Matter Exclusions. Casebook 123-146 [plus Softcover Supplement]
  • Class 10: Functionality. Casebook 147-184
  • Class 11: Functionality. Casebook 184-214 [plus Softcover Supplement]

Memorandum Assignment Number One will be distributed around this time. The Assignment will be due on Monday, October 12.

  • Class 12: Use. Casebook 215-244 [plus Softcover Supplement]
  • Class 13: Use. Casebook 244-275 [plus Softcover Supplement]
  • Class 14: Abandonment. Casebook 275-301 [plus Softcover Supplement]
  • Class 15: Registration. Casebook 303-332 [plus Softcover Supplement]
  • Class 16: Registration. Casebook 332-363 [plus Softcover Supplement]

IV. Scope and Enforcement of Trademark Rights

  • Class 17: Geographic Limits. Casebook 367-388 [plus Softcover Supplement]
  • Class 18: Territoriality. Casebook 388-422 [plus Softcover Supplement]

Optional: Graeme B. Dinwoodie & Mark D. Janis, Confusion Over Use: Contextualism in Trademark Law, 92 Iowa L. Rev. 1597 (2007)

  • Class 19: Likelihood of Confusion. Casebook 443-479 [plus Softcover Supplement]
  • Class 20: Likelihood of Confusion. Casebook 479-520 [plus Softcover Supplement]

Optional: Stacy L. Dogan & Mark A. Lemley, Grounding Trademark Law Through Trademark Use, 92 Iowa L. Rev. 1669 (2007)

  • Class 21: Likelihood of Confusion. Casebook 520-534 [plus Softcover Supplement]

Memorandum Assignment Number Two will be distributed around this time. The Assignment will be due on Friday, November 13.

  • Class 22: Confusion Away from the Point of Sale. Casebook 534-573 [plus Softcover Supplement]

Optional: Barton Beebe, Search and Persuasion in Trademark Law, 103 Mich. L. Rev. 2020 (2005)

  • Class 23: Indirect and Vicarious Theories of Infringement Liability. Casebook 574-584 [plus Softcover Supplement]
  • Class 24: Dilution. Casebook 585-598 [plus Softcover Supplement]
  • Class 25: Dilution. Casebook 598-611 [plus Softcover Supplement]
  • Class 26: Permissible Uses. Casebook 663-720 [plus Softcover Supplement]
  • Class 27: Permissible Uses. Casebook 720-742 [plus Softcover Supplement]
  • Class 28: False Advertising. Casebook 743-770 [plus Softcover  Supplement]

Memorandum Assignment Number Three will be distributed during the last week of class. The Assignment will be due on the last day of exams.