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Obtaining, Using and Protecting Trademarks

Essential IP skills for the business lawyer

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  • Product Number: 2182163WFM
  • Publication Date: 10/4/2017
  • Edition: 3rd Edition 2017
  • Copyright: © 2017 MCLE, Inc.
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  • Product Description
  • Table of Contents
  • Editors & Authors
  • Product Description

    Product Description

    This handy primer is a step-by-step guide to developing a trademark management system. Use it to expand your knowledge of the various types of marks and their relative registerability; how to perform a trademark search and clearance; how to apply for and register a trademark; proper use and maintenance of trademarks and the methods for enforcing those trademarks. Sample forms round out this practice tool—use them as you develop your own trademark management system.

    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

    Table of Contents

    expand all
    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

    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
  • Editors & Authors

    Author(s)

    William E. O'Brien, Esq., Law Office of William E. O'Brien, Westborough
    Dr. Alexander Theis, von Kreisler Selting Werner, Cologne