Learning about the US trademark registration process
Audio Lecture Series -- The US Trademark Application Process
- Sixteen lectures, each about one-half hour in length
- Format: MP3 on a USB flash drive
- twenty-one-page study guide (PDF)
- Recorded live before an audience of law students in the Spring of 2009
Here is are two sample lectures, lecture 1 and lecture 5 in this series. We suggest you right-click on the links, download the lectures to your computer, and transfer them to your MP3 player to listen to the sample lectures.
These lectures provide an introduction to and survey of the US trademark application process. Topics discussed include:
- Background -- how trademarks get registered in countries outside of the US
- Purposes of US trademark law
- Constitutional basis for US trademark law
- Basic steps for a US trademark application
- What you get with a US trademark registration
- Identification of goods and/or services
- Choosing a new trademark
- Steps carried out by an Examining Attorney in examining a US trademark application
- Types of trademarks - standard characters, logos, sounds, scents, colors
- Intent-to-use trademark applications
- Supplemental register
- Specimens of use
- Minimum requirements to obtain a filing date
- Using TARR to check the status of pending applications
- TESS, TDR, TTABVUE
- Treaty-based filing bases -- Sections 44(d) and 44(e)
- Renewing a US trademark registration
- Paris Convention inbound and outbound
- Office for Harmonization in the Internal Market (OHIM)
- Madrid Protocol
- Electronic Trademark Assignment System (ETAS)
- Domestic Representative
Throughout the lectures, Professor Oppedahl describes Best Practices to be followed by trademark applicants at various points in the application process.
Who should listen to these lectures? You should listen to these lectures if:
- you are a lawyer or law student who is just learning about the trademark process
- you are a secretary or administrative assistant or paralegal who is just learning about the trademark process
- if you are starting your training to be a trademark docket clerk in a law firm or corporate legal department
- if you are an in-house general counsel supervising outside trademark firms
The only person who would not benefit from these lectures is a person who is already very familiar with the entire US trademark application process.
|Are you an attorney who has hired a new attorney or a new administrative assistant, paralegal, or secretary? If so, ask yourself what your lost billings would be if you were to spend eight hours explaining the US trademark process to this new person. Maybe you would be money ahead to purchase this lecture series for this new person!|
About the lecturer
Your lecturer is Professor Carl Oppedahl. Professor Oppedahl is the founder of the Oppedahl Patent Law Firm, and has been practicing intellectual property law for over two decades. His firm has obtained many hundreds of US trademark registrations for clients of the firm. He received a bachelor's degree in physics and mathematics from Grinnell College, and received his JD from Harvard Law School. Professor Oppedahl has served as the chair of the Patent Cooperation Treaty Issues committee of the American Intellectual Property Law Association and as the chair of the Electronic Business committee of that association. He is admitted to practice before the US Patent and Trademark Office and before many courts including the Court of Appeals for the Federal Circuit and the US Supreme Court. Professor Oppedahl teaches Advanced Patent Law as an adjunct professor at the University of Denver School of Law.
Frequently asked questions:
- I'm an attorney and I took a trademark law course in law school. Why should I listen to these lectures? Law school trademark courses vary from one law school to the next, but many law school trademark courses focus more on legal principles and theories of trademark law than on the nuts and bolts of the day-to-day trademark application process. If you have not been exposed in detail to the nuts and bolts of day-to-day trademark prosecution, then this lecture series is for you.
- I'm an attorney. I assume that when I start my job at my law firm or corporation, there will be non-attorney staff will attend to all day-to-day tasks and I will never need to know about these things. Isn't this lecture series really for non-attorneys? Think about it. As an attorney, you have ultimately responsible for all of the work done by non-attorneys under your supervision. To competently supervise the work of your staff, you should know everything about the day-to-day things that your staff are supposed to know. If you have not been exposed in detail to the nuts and bolts of day-to-day trademark prosecution, then this lecture series is for you.
- What are the license terms for this lecture series? You are permitted to use these MP3 files the same way you would use a physical book. Just as you can read a book, and then pass it along to a single other person, so you may pass along these MP3 files to someone else. But you may not pass along these MP3 files to two other people, any more than you could give a single book to two people. If you pass along these MP3 files to someone else, you may not retain a copy, any more than you could give a book to someone and still keep a copy of the book. You must not post these MP3 files on a server where multiple people can make copies of the MP3 files.
- Item #: 034