Trademark Prosecution Practice Guide

Trademark Prosecution: A Casebook and Practice Guide.

The process of obtaining a federal trademark registration is a process that few consumers appreciate. There is substantial work that goes into “prosecuting” a trademark through the process, and the work requires expertise. As a law student in the 1990’s, I took a course called IP Survey when the text was in its first iteration (Intellectual Property in the New Technological Age 1997 by Peter Menell, Mark Lemley, Robert Merges). At the time, the primary resources for learning trademark prosecution were either a doctrinal casebook, the TMEP, and McCarthy. 

Over the course of my practice, I found myself using my past briefs as teaching tools and realized that it was a quicker path to understanding the process than sifting through the TMEP. While McCarthy’s treatise is still my “go-to” resource, I found that law students and new practitioners needed to see how the arguments were formulated as much as seeing the black letter law, statutes, and cases. Over the course of many years, I assembled my briefs into sections and, with the help of many law students, put the office actions and responses into a single volume, which is now what I’ll call a casebook but is actually more of a practice guide. 

The casebook/ practice guide is open source and as close to free as one can be without me hosting a website like Barton Beebe does for the best doctrinal casebook on trademark law (which my law students are thankful for, of course). I encourage students and practitioners to poach sections of my briefs for style and arguments but encourage everyone to check the cases, statutes, current TMEP, and of course, McCarthy on Trademarks as they develop a library of briefs of their own. I also welcome colleagues from the practice to join me as co-editors and continue the work forward. 

The book is an ideal resource for clinical programs at law schools, which can use the book as reference material and as a “lump of clay” for students to use the structure of my arguments to formulate their own briefs for pro bono and clinical work.