Trademark and Branding Project I: basic knockout searching and ITU application

Note to public: this assignment is created for teaching purposes. This project uses real-world materials in order to provide a meaningful learning experience. However, no actual affiliation with any person or entity exists. 

Background. 

Acme, Inc., is a fictional business in Dania Beach, Florida, “located” at 5150 N.W. Federal Hwy., Suite 31, Dania Beach, FL 33004. In Project 1, you will act in two capacities: first, as a CEO for Acme, Inc, a corporation that wants to use and register a trademark or service mark, and second, as a lawyer for another Acme, Inc. CEO who wants to do the same thing with different marks.

Thus, you will both come up with a mark that a classmate will work on this semester, and you will role-play as lawyer for another classmate/CEO as well.

Ultimately, you will come up with a mark (as CEO), confer with a lawyer (both as CEO and as a lawyer), do preliminary searching, and draft an Intent-to-use trademark application. You will assemble all relevant materials along with a supportive memo and submit the materials as indicated below by the due date listed on the Assignments page.

Required tasks.

Here are guiding instructions regarding the application. You can find the due dates on the Assignments page.

First, create at least four marks.

Do this by the due date listed on the Assignments page. Here, you will act as the CEO for Acme, Inc. In this part of the assignment, you will create at least four (4) marks, along with goods or services. Afterwards, I will select one of the marks for Acme and give it to Acme’s “lawyer” to handle.

Second, engage in client/attorney conferences.

Do this by the due date listed on the Assignments page. In this part of the Assignment, you will role-play in two capacities. First, you will act as “lawyer” to another classmate, researching which USPTO classes might be applicable, and how to phrase the identification of goods/services for each class. After doing that, you will also confer with the assigned CEO for your assigned mark to obtain information, and to later revise and approve your application’s classes, identification, and other sections. Second, you will continue to act as the “CEO” for Acme, and work with your corporation’s assigned “lawyer” to help them do the same thing. Be responsive.

Third, engage in preliminary (knock-out) searching.

Do this by the due date listed on the Assignments page. Here, you will do basic “knock-out” (preliminary) searching to see if there are any clear impediments to your client’s use or registration of its chosen mark. You will also later document and discuss your searching in your memo as part of your casefile. There are training activities, including a training video and in-class training.

Fourth, draft an ITU application.

Do this by the due date listed on the Assignments page. This is the ultimate goal, drafting an Intent-to-use (ITU) trademark application using the USPTO’s online Standard TEAS application. You will learn how to use these tools, how to save your initial and final work, and how to document your work for your casefile. There are training activities, including a training video and in-class training. As indicated in more detail below, at no time may you contact anyone from the USPTO or any other person who is not a current member of this firm (i.e., this class). The application template can be found here.

Finally, write your memo and create your case file.

Organize your work, incorporate and elaborate on it in your required project memo, and consolidate the materials into a single PDF. Your memo template can be found at this link, which contains instructions and significant guidance. You would be wise to review this document early in your work in this project so that you may plan ahead. Follow the instructions carefully, and do not wait too long to start on it. Attention to detail and organization matters. Much of the success in this project requires nothing more than continued diligence and effort. Students who work steadily are likely to do well. Students who wait until the end will not.

If you need any additional information, please contact me.

Due date.

See the Assignments page for the due date and time, as well as the Canvas link to which you must upload your consolidated PDF.

Required contents of case file.

Your casefile submission must be a single consolidated PDF, organized as noted below. To foster that, you should save all your working documents as PDFs, and prior to submitting, you should combine them into one well-organized PDF file. There are a variety of programs that do that, but the easiest way is to use Combine PDF , which allows you to take a bunch of documents and to combine them into one PDF. I will show you how to do this in class. Additionally, I would caution you to make sure all pages are of a standard (i.e., 8 1/2 x 11) size; otherwise, the PDF will be difficult to navigate.

Your combined PDF must–at a minimum–include the following, in the exact order listed below:

• A cover sheet indicating your name, your client’s name and CEO, the mark, the project, and the date.
• A table of contents, preferably with pagination to the actual PDF document. This eases review, but to do it well requires planning and time.
• Any notes, emails, or notes to file concerning your conferences and any decisions made with your client’s CEO.
• Your draft ITU application, using the supplied application template.
• Your memo as based on the supplied memo template, which will include:
  • The memo with required sections and any sections you add, including any screenshots
  • Exhibits to the memo which must be labeled (and cited accordingly in the memo), including:
    • A page with a listing of Exhibits
    • The notes of your conversation with your client’s CEO, and/or any memo to file on your discussions
    • Correspondence between you and your client’s CEO
    • Any other information you would like to include.
    • Exhibits of any information (such as webpages of relevant common-law hits) that are too big to incorporate into the memo as screenshots.
• Any other documentation you think should be included.
• The file must end with your filled-out and electronically signed copy of the Certification of Originality and Attribution, which is attached to the end of the memo template.
  • To receive a score in any project, a certification form must be filled out and electronically signed. Cf. FRCP 11(a).
  • Your certification must include annotated copies of any templates or examples used as a basis for your own work (such as existing registrations or applications you used to crib or copy identifications of goods/services). You must also annotate any templates to highlight what you have borrowed or adapted. To annotate your PDF, use tools such as:
  • • Adobe Acrobat
    • Foxit Reader (click here)
    • A tablet such as an iPad with a stylus and software such as OneDrive or Adobe Reader.

Permitted and prohibited assistance and sources

As noted in earlier classes, I encourage each of you to seek out, and to provide assistance to, your current Branding & Trademark classmates. Lawyering is a collaborative learning experience, and I want you to learn from your apprentice colleagues. That means you can ask and answer questions, seek and provide suggestions, and seek and receive comments on forms and drafts.

Equally so, you can and should seek out documents and templates (such as an existing identification of goods) to help you. Obviously, you must still do your own work by updating materials to reflect your own facts in light of the governing law. Regardless of what a form or template may say, the lawyer who uses it is always responsible for making sure it is factually correct, legally sound, appropriate for the situation, and proper for the client’s needs.

The only thing I require of you in return is that you fully and truthfully fill out the attribution form, in which you will state who you helped, who helped you, and how. You must also identify and include any templates or pre-existing materials that you use in drafting your forms or memo. Err on the side of revealing too much information rather than too little.

To be clear, you absolutely may not seek out or accept information or assistance from anyone who is not currently enrolled in this course (such as other students at STU). This prohibition includes, without limitation:

• STU students not currently enrolled in this course.
• Lawyers and other legal professionals.
• Anybody at the U.S. Patent and Trademark Office.

Scoring.

This project constitutes 35% of your course score. The remaining portions are project 2 (40%) and class participation (25%).

Scoring will be done on a 4.0 scale (actually, up to a 4.5, which would reflect the equivalent of an A+ for a particular category). Note that your score does not depend at all on whether your client’s mark is registrable; indeed, you might very reasonably conclude that the mark should not be used or registered. Of course, you still need to prepare an application for my review as that is an important part of your learning experience, so include that. (But then put down your client’s CEO or my name down as signatory.)

Assuming you provide timely work throughout the project, your overall score will be based on the considerations below.

Scoring for each component of this project will be done on a 4.0 scale.

*: Overall project penalty of up to -0.5 if certification is not initially and properly filled out and e-signed, with templates provided and annotated. If project is not signed at all, I may give you an opportunity to cure the defect. If I give you an opportunity to cure and you do not correct the lack of signature, the penalty is 100%. Just like in court, unsigned projects must be stricken. Cf. FRCP 11(a). Similarly, barring exceptional circumstances, late submissions will have their overall score reduced.

Project-related links.

• Application template
• Memo template
• Getting started:
  • Listing of attorneys, CEOs, marks, and goods/services. I’ll send you the password via email.
  • Video on basic trademark registration with TEAS
  • Steps in getting a trademark registration from the USPTO
  • Trademark fees
• Searching:
  • Video on basic knockout searching
  • TMEP § 1701.01
  • Search tools at USPTO (TESS)
• ITU Applications:
  • Trademark Manual of Examining Procedure (TMEP)
  • Classification and goods/services:
    • International classification listing
    • Acceptable Identification of Goods and Services Manual. Use this to determine: 1) what classes to use; and 2) how you might phrase your goods/services.
  •  TEAS:
    • USPTO TEAS main page
    • Initial application form info
    • TEAS tutorial
    • Tips on filing with TEAS
    • TEAS Plus versus TEAS Standard (we’ll be using the latter)
    • TEAS Standard form
    • Index of all TEAS forms
• Other resources:
  • Foxit Reader (click here)

Revised Sept. 4, 2023 (cleaning up formatting; updating instructions to new app form); 9/20/23 (adding addition instance of app template link; clarifying instructions for project submission)