Product Description

Recent updates:

• September 2017

  Dear Subscriber:

  Thank you for choosing to keep your volume of Obtaining, Using, and Protecting Trademarks up to date with this 2017 edition. Inside, you will find the following:

  • See Chapter 2 for two new checklists. The first provides an aid in determining the nature of a client's need for intellectual property legal services; the second provides details to consider relative to information-gathering at the client intake stage of representation.

  • See Chapter 3 for a checklist for examining a proposed trademark. This tool helps to ensure that counsel reviews a client's idea carefully prior to taking action. Chapter 3 also features a checklist of considerations for ex parte trademark cases.

  • See Chapter 4 for a good example of a simple cease-and-desist letter. Chapter 5 provides a checklist of elements that are essential considerations in the drafting of such letters.

  • See Chapter 8 for a brief discussion of the European Union's treatment of trademarks that cannot be graphically reproduced.

  We at MCLE trust that you may find this material useful in your trademark practice, and valuable in maintaining your law library.

  Cordially,

  Maryanne G. Jensen, Esq., MCLE Director of Publications

Table of Contents

Chapter 1 expand

Types of Intellectual Property

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Chapter 2 expand

Interviewing the Client

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Checklist 2.1

- Checklist of Preliminary Questions to Determine a Prospective Client’s Needs for Intellectual Property Protection Buy Form

Checklist 2.2

- Checklist for Trademark-Information Gathering Buy Form

Chapter 3 expand

Conducting a Search

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Checklist 3.1

- Checklist for Preparing a Trademark Reporting Letter Buy Form

Checklist 3.2

- Checklist for Examining a Proposed Trademark Buy Form

Checklist 3.3

- Checklist of Considerations in Ex ParteTrademark Cases Buy Form

Chapter 4 expand

Filing and Prosecuting the Application

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Checklist 4.1

- Checklist for the Application of the “DuPont Factors” to a Determination of Likelihood of Confusion Buy Form

Chapter 5 expand

Trademark Enforcement

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Dale C. Kerester, Esq., Landay Leblang Stern

Checklist 5.1

- Checklist: Elements of a Trademark Cease and Desist Letter Buy Form

Checklist 5.2

- Checklist of Actions to Take Prior to Filing a Complaint for Trademark Infringement Buy Form

Chapter 6 expand

Selected Issues

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Chapter 7 expand

U.S. Customs and Border Protection (CBP)

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William E. O'Brien, Esq., Law Office of William E. O'Brien

Chapter 8 expand

The European Union Trade Mark

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Dr. Alexander Theis, von Kreisler Selting Werner

Appendix

Resources Pertinent to Trademark Practice

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Appendix A

- Bibliography Buy Form

Appendix B

- Example of Trademark Search Reporting Letter Buy Form

Appendix C

- Basic Facts About Trademarks Buy Form

Appendix D

- A Guide to Proper Trademark Use Buy Form

Appendix E

- Cease and Desist Letter Buy Form

Appendix F

- Protecting Your Trademark Abroad: Twenty Questions About the Madrid Protocol Buy Form

Appendix G

- Members of the Madrid Union as of July 31, 2017 Buy Form

Appendix H

- Guide to the International Registration of Marks Buy Form

Author(s)