Trademark Law Important Course Information – Fall 2021

TRADEMARK LAW IMPORTANT COURSE INFORMATION – FALL 2021


ABOUT THE COURSE

Trademark Law is a three-credit limited enrollment course for upper-level law students, with enrollment limited to 50 students. No prior experience with intellectual property law is required.  Students are expected to remember, understand, and apply what they learned in first-year courses in Contracts, Property, and Torts.

The course is LAW 5694 in the University of Pittsburgh course catalog.

PREREQUISITE

There is no prerequisite for this course. Students are expected to have learned the fundamentals of legal research, legal analysis, and legal writing.

COURSE OBJECTIVES AND THE OFFICIAL COURSE DESCRIPTION

The official course description (University of Pittsburgh course number 5694) is this:

Trademark law deals with legal bases for obtaining and enforcing interests in commercial symbols, including logos, slogans, and the like, which play central roles both in modern commercial transactions (selling and buying stuff) and in daily conversation. Trademarks are partly information and partly the stuff of speech. The Trademark Law course will teach you about the many roles that trademark law plays in positioning trademarks as part of business strategies, commercial markets and other institutions, and everyday life. For producers of goods and services, how does trademark law help them make money? For competitors, for purchasers of goods and services, and for firms and citizens generally, how does trademark law preserve the power to access and use trademarks as information about commercial things, information that shapes about the commercial sphere, and information that guides daily experience (if that’s separate from the commercial sphere). The course will teach those things in the context of teaching the skills of trademark lawyering. How do practicing lawyers work with clients? How do practicing lawyers develop and exercise professional judgment? How do practicing lawyers solve trademark problems? The course will put students in the role of practicing lawyers and teach them to think, write, and act as lawyers generally and especially as trademark lawyers.

SURE, BUT WHAT DOES THAT MEAN?

The following provides a fuller description of the goals of the course. In Trademark Law, students will:

  • Learn the fundamental nuts and bolts of American trademark doctrine, including how trademark fits into related schemes in international law and in patent and copyright law. Much of the reading is oriented to nuts and bolts questions. Students are expected to master much of the basics of this material on their own. Via classroom discussion and the required writing assignments, students will explore the justifications for the law and will extend and apply the nuts and bolts into newer and unclear contexts.
  • Learn many of the theories and policies that underlie trademark law, and many of the practical consequences and questions that trademark lawyers and their clients face. Much of the classroom discussion will be oriented to theory and policy and to consequences and questions. The nuts and bolts of trademark law cover a landscape that is broader than a single semester can cover, and the nuts and bolts change all the time. Therefore, we focus only partly on nuts and bolts. By contrast, trademark theory and policy, and trademark consequences and questions, are more conceptually complex, help integrate the different areas of the law, are (paradoxically) more durable, and are critical to understanding how to use trademark in practice, and for all of those reasons are more important. Students are expected to come to class prepared to engage in discussions that relate nuts and bolts to theory and policy and then to consequences.
  • Build on prior experience in the law. It is expected that students will recall and be able to apply the fundamental doctrines and policies of contract law, property law, and tort law.
  • Understand law and policy in the context of being a lawyer, that is, in the context of representing clients. Simply knowing law and policy for oneself is not enough. Lawyers (and therefore law students) must be able to situate their knowledge in the context of others’ problems. Lawyers must be effective problem solvers, and being an effective problem solver starts with effectively diagnosing problems, legal and otherwise.  I will rarely ask students to give me the correct answer to a legal question. I will frequently ask students to diagnose problem(s), to explore possible solutions, and to exercise their judgment in counseling others and advocating on their behalf.
  • Write. This is a course in advanced legal writing as well as course in the substance of the law.  The basics of the law are learned best when students use the law.  In this class, that means writing. Students should expect to have their writing scrutinized and critiqued at the level of the word and the sentence, at the level of the concept and the structure of the argument, and at the level of substantive legal analysis. This course does not include a final exam. It does include a lot of intensive legal writing.

LET’S PUT THAT MORE DIRECTLY

“Trademark Law” is about commercial symbols, logos, slogans, and about advertising, branding, and commerce generally.  A lot of trademark law has to do with how businesses and other organizations and groups organize and promote themselves.  A lot of it has to do with fair and unfair competition among businesses in a market economy, about consumer protection, and about ethical and unethical conduct.  Increasingly, a lot of it has to do with individual and collective speech and expression, some of it purposeful, much of it subconscious.

What does trademark law (and some related bodies of law, such as copyright law, patent law, Constitutional law, and tort law, among other things) have to say about each of those things?  More important, what do lawyers, clients, and judges do with the law, to make arguments, draw legally-binding conclusions, resolve disputes, and plan their affairs? In what respects is trademark useful and effective?  In what respects it is inadequate and problematic? The semester will be dedicated to developing and discussing answers to those questions.

The required reading for the course consists primarily of cases and some statutes, primarily the federal Lanham Act. Each of these things, and the collection of them, constitutes “trademark law” in the US. There is no traditional law school casebook, but the reading is mostly formatted to mimic the appearance of a casebook.    

The first and longest section of the syllabus for the course lays out the “classical” or “traditional” law of trademark as it is found and applied today, though such a rapidly evolving body of law cannot be truly called “traditional” in a meaningful sense.  The second and third, shorter sections of the syllabus highlight areas and ways in which that “classical” or “traditional” trademark law applies weakly, or not at all, or with problematic consequences for various domains of business and individual behavior.

For each student, the goal is not to memorize trademark law in all of its details.  To repeat:  The goal is not to memorize the details of the law.

Instead, I care about “the tools.” Each student’s first goal, and only a first goal, is to figure out and to be able to state – aloud, and in writing – the core, basic principles of trademark law.  Students (and lawyers) usually can look up the rules and their details, and the LaFrance hornbook that is recommended is a pretty good compendium of the rules.

Each student’s second goal is to be able to recognize that some conflict between people or organizations, or some negotiation possibly leading to a deal, poses one or more problems and one or more legal issues that those basic principles address.

Each student’s third goal is to be able to use those principles to make arguments and counter-arguments that help a client, or a judge, resolve that conflict or complete that negotiation. Each student should be able to use the basic rules as a set of basic tools.

LEARNING OUTCOMES

At the end of the course:

Each student should be able to write an outline of no more than 1-2 pages of all of the basic principles and concepts of trademark law.

Each student should be able to use those basic principles and concepts to identify basic legal and factual issues in a new problem (that is, one that the student has not encountered before), and to write up a short, coherent outline of those issues and how they should be addressed in the form of different arguments.

Each student should be able to determine, briefly and in writing, which arguments are likely to be good and persuasive ones, and which arguments are likely to be poor and unpersuasive ones, and in each instance, why.

In short, each student should be able to DO trademark law in a basic and foundational way.

GETTING THERE

The goal of learning how to DO trademark law in this course is accomplished in significant part through three hypothetical problems that each student will analyze and write up during the course of the semester.  By working on these problems each student will practice the skills they are trying to learn, and each student will practice those skills by practicing those skills in ways that track the basics of what legal professionals need to master in order to succeed:  working collaboratively and communicating effectively in writing.

These three writing assignments will, collectively, constitute all of the graded work for the course.  We will discuss each hypothetical problem in class before the work product analyzing the problem is submitted.  For more on the writing assignments, see below and the “Writing Assignments” page for this course.

CLASSROOM COMPUTER AND WIRELESS POLICY

[Omitted, for the Fall 2021 version of Trademark Law.]

CLASS MEETING TIME AND PLACE

Class will meet Mondays and Wednesdays from 10:30 a.m. to 11:50 a.m.

We will meet online, rather than in a physical location in the Barco Law Building. There will be no face-to-face instruction.

The online venue for the class meetings will be the ZOOM videoconferencing service (pitt.zoom.us).

Room G20 in the Barco Law Building will be available during class meeting times for students to use to connect to the class ZOOM videoconference.

Instructions for how to access the ZOOM space are below (in part) and will be distributed to enrolled students via email and via a course page in TWEN.

Each class session will be conducted “synchronously,” that is, in live or real time. Each class session will be recorded, and the recordings will be posted online so that students can access them and review them later.

CLASS ATTENDANCE AND PARTICIPATION

The American Bar Association and the University of Pittsburgh School of Law require regular and punctual class attendance (policy here).

The Law School’s formal attendance policy means that students must attend at least 80 percent of class meetings in order to receive course credit.  

Attendance will be taken via the Top Hat app. The attendance code for each class session is generated that day by Top Hat (i.e., a new code for each class) and will be posted in that day’s chat session on Zoom.

Students have plenty to be concerned with during the Fall 2021 semester before wondering about the consequences of possibly missing class. I will be flexible in administering the attendance policy. If you have concerns about that, please contact me.

The formal policy is less important than this: Students are expected to arrive for class on time, which means *before the announced start time for the class.* Students are expected to read assignments in advance of the class meeting for which they are assigned. Students should be prepared to have something to say about the assigned material.

It’s best for all if you ask questions and if you refer to specific points and ideas from the assigned materials when you do that.

ABOUT ZOOM ZOOM ZOOM

To help ensure a productive online classroom environment for everyone, students should follow these guidelines when using the ZOOM service for this class:

  1. Health first. Log in and participate if you’re able. If you’re not, let me know privately and/or or get in touch with one of the deans at Pitt Law.
  2. Log in a little bit early if possible, before the official start time of the class, so that you’re ready to participate.
  3. Log in with a real name for your screen name: preferred first name, then preferred last name. On your Zoom image on your screen, clicking on the “three dots in the corner” settings icon should allow students to type in the preferred names.
  4. If possible, set up your computer in a space that’s quiet and free of distractions and interruptions. Mute or turn off music and other video sources. It’s not always possible to find a completely quiet place, so students should do their best and we’ll all be a bit flexible.
  5. Camera on, if possible. Again, that’s not always possible (or desirable), so students should do their best.
  6. Microphone *off* by default. But know how to activate it when you want to or need to.
  7. Use a headset or earbuds if you can, rather that your computer’s speakers.
  8. In voice and in chat, be respectful of everyone else in the group.
  9. Class sessions will be recorded. The recordings will be posted to a private server for everyone in the class (but only everyone in the class) to review later.

CLASS CANCELLATIONS AND MAKEUPS

If a class is cancelled for any reason, it will be made up via a newly-scheduled class session.  

ILLNESS

If you, a friend, or a family member experiences illness or caregiving responsibilities that require that you take time away from this course, please tell me, and please contact the Dean of Students (Alexandra (Allie) Linsenmeyer; alinsenm@pitt.edu) for assistance.

CHALLENGING CONVERSATIONS

To a significant degree trademark law is about the ethics and public policy of free expression in a market capitalist society, both today and historically. We will see over and over again conflicts over language and symbols that challenge our beliefs about distinctions between what is (appropriately) part of a competitive marketplace and what is (inappropriately) hurtful and damaging.

Law students, like lawyers and judges, need to develop techniques for discussing those conflicts thoughtfully without perpetuating the harms that caused those conflicts in the first place. I will help students in this class do that. For more, see the “Inclusivity and Diversity” section, below.

As part of this class, you should expect to see, read, and perhaps hear argument, analysis, language, and imagery that causes offense, and that may be intended to cause offense. “Offense” runs a spectrum from the modestly offensive and pretty common “challenges prior assumptions and beliefs about the world” to the much more substantially offensive and (one hopes) rarer “approaches the edge of causing actual harm in the world.” I will make every effort not to put you in the position of confronting the latter without your choosing to do so.

INCLUSIVITY AND DIVERSITY

This course, like all law school courses, is designed to be challenging. If there are aspects of this course that prevent you from learning or exclude you, please let me know as soon as possible. Together we’ll develop strategies to meet both your needs and the requirements of the course. I encourage to talk with me directly.

Pitt also has other support for you: the Office of Disability Resources and Services, the Writing Center, and the Counseling Center, and the online mental health resource, ULifeline. For campus financial and food and health assistance, please see this list of resources from Pitt Libraries, and note that you can apply for emergency loan. If you need official accommodations, you have a right to have these met; please see the section below on “Students with Disabilities.” If you would like less formal means of support in this course, please get in touch with me.

STUDENTS WITH DISABILITIES

[The formality of the following comes from the University of Pittsburgh and Pitt Law.]

It is the policy and practice of the University of Pittsburgh School of Law to comply with the Americans with Disabilities Act, Section 504 of the Rehabilitation Act, and Commonwealth of Pennsylvania requirements regarding students and applicants with disabilities. Under these laws, no qualified individual with a disability shall be denied access to or participation in services, programs, and activities of the University of Pittsburgh School of Law.

Students who require accommodations because of a physical, learning or other disability must be evaluated by the University of Pittsburgh’s Office of Disability Resource Services (ODRS). The ODRS will document and verify the student’s status and make recommendations for appropriate accommodations to the Dean of Students.

If a student has a disability for which the student is or may be requesting accommodation, that student should contact both the office of the Dean of Students in the Law School (Dean Alexandra Linsenmeyer; alinsenm@pitt.edu) and the University Office of Disability Resources and Services (“DRS”), 216 William Pitt Union, Phone 412-648-7890, Video Phone 412-228-5374, Fax 412-624-3346, as early as possible in the semester. DRS will verify the disability and determine reasonable accommodations for this course. The Dean of Students will oversee the implementation of accommodations.

Students should not discuss exam accommodations with professors. The Dean of Students and the Registrar will insure that any testing accommodations are provided through the DRS.

ACADEMIC INTEGRITY

Students enrolling in this course are expected to comply with the University of Pittsburgh’s Student Code of Conduct, which may be accessed online here.

Students also are expected to comply with the University of Pittsburgh’s Guidelines on Academic Integrity and the School of Law’s Standards of Academic Integrity.

CONTACTING PROFESSOR MADISON

I will not hold regular “drop in” in person office hours. Students are welcome to meet with me virtually, via ZOOM by appointment and in person by appointment (when and where it is safe to do so).

New for 2021-2022 classes: I will manage student appointments via the Calendly app. Click here to see my schedule (Monday and Tuesday afternoons) and to make a virtual appointment. Virtual meetings will take place via the same ZOOM link used for class sessions.

If you are not available during my usual meeting times, email me to find an agreeable alternative.

I am not available on Fridays.

New for 2021-2022 classes: Like college students, law students are notorious for not using the most important resource of their school – the faculty – effectively. “Office hours” aren’t the only way for students to do better in that department, but they’re the easiest way.

What does “effectively” mean? Why meet with a professor during “office hours”? Maybe students have questions about class material; that’s the usual reason. But the more important reason, and the better and more effective use of “office hours” time, is simply to get to know the professor – and for the professor to get to know the student. What are your hopes and dreams? Anxieties and fears? Passions and talents?

Little of this will matter in the short run, and (to anticipate a common question) your professor (me) is rarely in a position to help a student get a particular job. Personal acquaintance can help professors write more persuasive recommendation letters, but recommendations letters are only the tips of the proverbial icebergs when it comes to benefits from personal relationships. Over the longer run, faculty friendships forged as students often pay enormous dividends in all sorts of unexpected ways.

I’ve certainly experienced that in my observations of former Pitt Law students. And I can vouch for that from my own experience. I owe much of my career as a law professor to the fact that I spent many hours during my third year of law school talking about German professional soccer with one of my professors, a man who was, at the time, one of the most celebrated Constitutional law scholars in the world. (I was writing a long research paper under his supervision; we also talked about the paper. But the soccer conversations stayed with me – and with him.) Soccer may not be your thing. What is? If I know, I’m much more likely to remember you in the years to come.

REQUIRED COURSE MATERIALS

All of the materials required for the course are available for free, online. The majority of the readings are selections from an open source and open access, free-to-download-print-and-annotate-and-edit trademark law casebook created and edited by Professor Barton Beebe at New York University School of Law.  The title of the casebook is Trademark Law: An Open-Source Casebook (Version 8.0).  This edition of the book was released in July 2021. Professor Beebe maintains a website for the book here.

Students have the following options with respect to accessing and/or acquiring copies of this book.

Option one: Access and/or download the readings online, either as a single file or as the full book has been broken out into smaller Parts. The book is quite large, and the complete file is quite large as well. Accessing it on a part-by-part basis will give students smaller files to work with.

Each unit of readings is available in .doc [MS Word] and .pdf formats.

Students may print, annotate, edit, and/or cut-and-paste all or parts of each file as they wish.

Option two: Buy print copies at a bargain price. Although students are not required to purchase a casebook or other text, Professor Beebe makes his materials available for download at his website and available for purchase in printed form via amazon.com. 

The readings for this course are drawn from both volumes. Students who choose this option should purchase both volumes.

The total cost of the print versions of the book is approximately $20. That price is the cost of producing the print versions. Professor Beebe receives no royalties.

Readings described as “Boyle & Jenkins” consist of free-to-download-print-and-annotate chapters from the Open Intellectual Property Casebook produced by James Boyle & Jennifer Jenkins and described in great detail here.

OPTIONAL TRADEMARK LAW MATERIALS

There is a vast secondary literature on trademark law. Here are some of the best sources:

SLIDES

Slides used in class will be posted afterward on the course homepage.

GRADING

The grade for this course will be based on three short open writing assignments. The first two assignments will each be worth 30% of the final grade. The final assignment will be worth 40% of the final grade. The substance and format of the assignments, their timing, and their due dates will be discussed in class as the semester progresses.

WRITING ASSIGNMENT DUE DATES

The due dates for the required writing assignments are listed at the Course Homepage / Reading and Class Assignments as part of the list of assignments and readings.

For clarity, the dates are:

  • Assignment 1:  Friday, October 8, 2021, at 3 pm.
  • Assignment 2:  Friday, November 12, 2021, at 3 pm.
  • Assignment 3:  Last day of exams (December 9, 2021), at 12 noon.

The official course policy on due dates is this: There will be no extensions or exceptions to assignment deadlines. Do not be late with the assignments.

The pandemic addendum on due dates is this : Traditionally, I’m pretty strict about deadlines. This year, I’ll be accommodating for students who, for one good faith reason or another, may struggle with that policy. It’s more important that students succeed than that they get the work in precisely on time. That said, flexibility has to have some limits. The assignments in this class move along at a steady clip, and it’s important for practical reasons – my grading and commenting on student papers as a batch, most of all – that the papers for each assignment be turned in essentially at the same time. Any student who expects to encounter a problem with a given due date should contact me directly as soon as that problem develops.

WRITING ASSIGNMENT REQUIREMENTS

Each writing assignment will be based on a written problem distributed via the course website, at the Writing Assignments page. There will be an opportunity to discuss the problem in class and ask questions about it after it is distributed. Each problem will be based on the readings and classroom discussions. The problems are designed so that they can be completed without independent research, but these will be open problems. There are no limits on the resources that students may bring to bear on their work.

Student work product must be typed or printed using a computer.

Each assignment has length and format limitations.

  • For assignments calling for legal memoranda, and unless students are instructed otherwise, each memorandum must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. No footnotes, endnotes, or attachments are permitted. The twelve [12] point proportional-width font known as Times New Roman must be used. Condensing or expanding the font is unacceptable.  
  • For assignments calling for email summaries, and unless students are instructed otherwise, each email prepared as student work product must be not longer than two [2] typewritten or printed pages, single-spaced, with 1″ minimum margins on all sides. No footnotes, endnotes, or attachments are permitted. The twelve [12] point proportional-width font known as Times New Roman must be used. Condensing or expanding the font is unacceptable.
  • For assignments calling for PowerPoint [or equivalent] slide decks, and unless students are instructed otherwise, each slide deck prepared as student work product must be not longer than 15 separate slides. Any font and font size may be used. No footnotes or slide notes are permitted. No images, animations, media files, or graphical or colored backgrounds or formats may be used other than matter that is (i) part of a professional-looking slide template and/or (ii) relevant to the matter being discussed in the slides.
  • Students and only students are responsible for ensuring that their computer system/software platform generates work product that complies with these length and format limitations.

Work product will be graded based on form, format, and writing quality as well as on content. The problems are designed so as not to have any single correct or even best solution. Each problem will present a range of issues that the student work should identify, analyze, and solve in a creative way.

As is customary for courses that are graded on the basis of students’ out of class work product rather than on the basis of final exams, the assignments will not be graded anonymously. Students should include their own names on the first page of their work product.

Work product should be turned in electronically, via the “Assignment Drop Box” at the Trademark Law – Fall 2021 page at TWEN, on Westlaw. Each assignment must be turned in no later than 3 pm on the day(s) that it is due or at such other date and time as may be directed in the instructions for a particular assignment.

If students experience difficulty delivering the assignment via TWEN, then they may send a copy via email to me no later than the date-and-time deadline for the assignment in question.

Student work product that does not conform to the format instructions above, or that is turned in late, is subject to grade reduction. In extreme cases, they may be disregarded.

Do not fail to follow the format requirements. Do not turn in a paper that is too long, even by a word or by a line.

Sample questions are available via the Writing Assignments page.

GRADING BONUS FOR STUDENT COLLABORATION

Collaboration and teamwork are the essence of professional life. Why not learn how to do it effectively in law school?

Student collaboration and consultation is permitted, even encouraged. The writing assignments are open. You may consult any resources you wish to, You may talk with other students in this class about the assignments and about your work. You may talk with people who are not currently enrolled in the class.

I don’t require collaboration. But simply permitting it is rarely effective. Students are so used to working solo (and are required to work solo in most law school classes) that they often don’t know how to get out of that habit.

To start to change that habit, starting with the Fall 2020 version of this course, I am trying something new: a carrot.

If you collaborate on your work with one or more others, then you have the option of writing and submitting a short (not to exceed 1 page, double-spaced) memo, one per assignment (meaning up to three, in total, over the course of the semester), that reflects on and assesses your collaboration experience.

Each memo should address:

  • What did you find easy about collaborating?
  • What did you find difficult about collaborating?
  • What did you feel that you learned about yourself, as a person or as a future lawyer, as a result of the collaboration?
  • What do you feel that you still have to learn about yourself, as a result of the collaboration?

The reflection memos will not be graded in themselves. At the end of the semester, students who turn in one or more reflection memos will be eligible to have their final grades raised by one-half grade, if the depth and quality of the reflections warrant an increase.

WHY RELY ON WRITING ASSIGNMENTS

Writing assignments have been included in my Copyright Law and Trademark Law courses for more than 15 years, for two reasons.

First, the best way to learn something is to practice it, rather than to memorize it.  “Doing” Trademark Law is much more effective professional preparation than “studying” Trademark Law.

Second, writing is a practical skill that every lawyer needs to master. All beginning lawyers need as much writing practice as they can get.

EMAIL POLICY

Substantive questions about trademark law are welcome via email, at madison@pitt.edu. In general, questions will be answered during class, rather than via email, so that the entire class gets the benefit of the exchange.