Trademark and Branding Management: Syllabus (Fall 2023)

TRADEMARK AND BRANDING MANAGEMENT: SYLLABUS (Fall 2023)

Professor Ira Steven Nathenson

St. Thomas University College of Law

Branding & Trademark Management (Course 965C), Fall 2023

Email:	inathenson@stu.edu
Phone:	305-474-2454
Homepage:	https://www.nathenson.org/
Course website:	https://nathenson.org/courses/trademark/
Class time:	Tues. & Thurs. 10:00-11:30AM, Room 215
Office hours:	This week’s office hours Appointment sign-up page (for STU students; otherwise, email me)

ABOUT TRADEMARK & BRANDING LAW

This course qualifies for the St. Thomas IP certificate. It also qualifies for skills credits.

Brand names such as COCA-COLA, NIKE, and APPLE are much more than trademarks: they are icons of modern culture.  The core of brand-name law is trademark law, the law governing fair and unfair competition regarding the words and symbols used by businesses for their goods and services. But in an information age, the law of brand names touches far more than hornbook trademark law, including social media branding practices that recruit consumers as soldiers in the corporate branding machine; disruptive technology that makes brand enforcement difficult; and cultural norms that treat brand names as symbols of social status and commentary, such as “this watch is the Mercedes of watches,” or the parodic song “Barbie Girl.” Any attorney who advises businesses in connection with product naming, marketing, or digital outreach should therefore have a solid grounding in the law of trademarks and branding. Accordingly, this course covers major topics in domestic trademark law, such as subject-matter, distinctiveness, genericness, the likelihood of confusion test, dilution, cybersquatting, and enforcement. It also pays close attention to the interplay of technology and law. The course qualifies for skills credits as well as towards the St. Thomas Law IP certificate.

COURSE WEBSITE; ASSIGNMENTS

Assignments and course-related materials will be posted to the course website at https://www.nathenson.org/courses/trademark.  In addition, selected course-related announcements and materials may be sent to your official St. Thomas Law email account.

BOOKS

Required books.

As noted below, you can use either the print book or the digital book. The former is very inexpensive and the latter is free. But make your choice based on what will provide the better learning experience. In making that decision, you should read the guidance below carefully.

1. Barton Beebe, Trademark Law: An Open-Source Casebook (v.10.0, July 2023). A free PDF of the casebook can be found at this link.  The printed book comes in two volumes and is extremely affordable (less than $25 for the books not counting any shipping costs) and you are strongly encouraged to work with them for the reasons noted below in the section you must read, “Should I use print or digital?”. Volume 1 | Volume 2.

1. Statutes: Read all statutes cited in the casebook. Most statutes can be found at the end of the statutory supplement to another trademark casebook by Professors Jane Ginsburg, Jessica Litman, and Mary Kevlin, which can be found at this link. Thank you, Professors and CAP Academic!

Should I use print or digital?

Studies show that students tend to read with more depth and retention when working with paper books rather than eBooks. And in law school, a student needs to switch deftly between their casebook, their briefs, their notes, and their statute book. Doing so is difficult to do when all these materials are on one screen and a student is not able to switch quickly between materials. More fundamentally, people tend to read in a cursory fashion on a screen, skimming rather than engaging. For these reasons, I have traditionally required students to use the paper editions of their casebook and statute book in class.

Having said that, I’m also respectful of modern realities: that the lawyers of today need to be computer-literate, and that eBooks are becoming increasingly common in undergraduate curricula.

Accordingly, students this year can choose whether to purchase the paper edition of the casebook and statute book, or work solely with the digital editions. Information on obtaining these books is contained in the next section. But before you make your decision, consider the following:

• Best of both worlds. If you want the best of both worlds, buy the print edition, which is super inexpensive. You can still download and use the digital version, which comes as an unprotected and easily annotated PDF.
• Whether print or digital, annotate.
  • Engage and annotate. As noted, law students are expected to read in depth and to engage with their materials. A paper book is easy to highlight and annotate, a digital text less so. However, the casebook is an unprotected PDF, and there are many good PDF annotation programs. (For Windows, I am a big fan of Foxit Reader.) Thus, as I will often say in class, don’t just read the materials. Engage with them, digest them. Doing so also helpfully slows down your reading and forces you to engage in more depth.
  • Spoiler alert: whether you use a printed book or eBook, I will come up to students and ask to see what they’ve done with their books, briefs, and statutes. An unmarked book is likely unread, unloved, and not understood. Thus, regardless of whether you choose print or digital, I expect you to do your own briefs and to annotate your readings and at times will want to see it myself.
• Master your print or digital environment.
  • Be organized and intentional. If you use print, then be organized. Bring your casebook and any assigned statutes to every class. Make sure you set up your in-class workspace so that you can deftly switch between materials, as the books, briefs, and notes are all part of an integrated classroom learning experience. For example, when cases discuss rules and statutes, you’ll need them side-by-side to follow the discussion.
  • If you use digital-only, I expect you to do the very same thing and your obligation of digital competency mandates that you are able to switch competently between materials.
    • While in class, you’ll need to switch between materials often. And I will often ask students what page or paragraph contains the “rule” that governs a hypothetical. Students need to be able to “pinpoint cite,” by referring to the page, paragraph, and language. It is no excuse to say “Sorry, I don’t have that on my screen.” 
    • Thus, working from a device is no excuse for not being able to work with your notes, brief, casebook, and statutes. You’ll need to have all loaded and develop the skill to switch back and forth as needed and without thinking, just like you need to be able to pay attention to gas, steering, brakes, and mirrors when you drive a car.
    • Don’t forget: you are training to be a lawyer, and your obligations of preparation and performance as a student in my class remain the same, whether using print or digital. This means becoming adept, among other things, at annotating electronic materials, switching between documents or screens, and searching through documents at a fast pace. Remember, your printed casebook classmates will be able to flip to page “X” in seconds, and those using a digital casebook need to be able to do the same thing on screen. A judge won’t wait for you to find materials in a digital document, and neither will your classmates and I.
    • Spoiler alert: Use two screens, a laptop and a tablet to increase your screen real estate. Also consider using a device with a stylus to take notes by hand, which will slow you down and make you more of an engaged participant and less of a stenographer.
• Do not be penny-wise. If you choose digital, do so because you know you will be able to work effectively in that environment, and that you are willing to engage and interact with the materials in a way that maximizes the effectiveness of your education. Do not make the choice based on saving a few dollars. First, a legal education is an expensive and significant life-event undertaking, so your choices should be based on what is the best tool for your learning. Second, you can get both print and digital super-inexpensively, so you can always experiment and develop your skills in case you are not sure if you can yet master the intensity of engagement required for studying complex legal materials.

GRADING

There is no final examination. As a skills course, your grade will be based on:

• Two experiential projects (totaling 75% of grade)
• Class participation (the remainder, i.e., 25% of grade)

The class participation score will be based on:

• Attendance (1/4 of participation). This generally means attending the entire class.
• Timeliness (1/4 of participation). This means being in your seat and ready for discussion once class begins.
• Discussant (1/4 of participation). This refers to your preparation, participation, and professionalism as a member of the class.
• Leader (1/4 of participation). This refers to your preparation, performance, and professionalism as a leader, moderator, or panelist.

CLASSROOM POLICIES

Accommodations.

If any students believe they need, or are entitled to receive, any accommodations due to a disability they should consult with the Assistant Dean for Student Affairs as early as possible. Further information on accommodations can be found at http://www.stu.edu/law/students/disability-accommodations.

Attendance: be there.

Class attendance. Attendance means being in the classroom, on time, and not leaving the classroom without authorization. Moreover, class attendance is mandatory and in accordance with St. Thomas Law’s attendance policy, you may not obtain credit for any course for which you miss more than 20% of the classes. However, I strongly recommend that you do not miss even that many classes. In addition to the assigned materials, anything I say or that we discuss in class is fair game for quizzes and exams. Further, if you are absent more than five times, you will be dropped from the course with a failing grade and will not be allowed to take the final exam. If you anticipate missing more than 20% of any class, you are strongly advised to contact the Assistant Dean of Students, John Hernandez, regarding the possibility of withdrawal before it is too late to do so. I do not have the discretion to excuse any absences so please do not ask me to do so.

Sign-in certification.

Sign-in sheet as verification of your presence. Since COVID hit, I take attendance manually. I prefer it as it helps me learn names and faces. But as an FYI, if we return to using a traditional sign-in sheet, then it is each student’s responsibility to personally sign the sheet (i.e., to certify their timely presence) during class. The attendance sheet is the exclusive measure of your attendance for that day, so do not come to me later and tell me you forgot to sign the roll sheet, and do not offer to show me your notes as proof that you were in class. Further, be aware that it is a serious violation of the Academic Integrity policy to sign in other people or to have others sign you in. The reason for this goes to the paramount value of honesty, which is one of the most important qualities of an aspiring attorney. In fact, we will study FRCP 11(b) regarding honesty in certification later this academic year.

Punctuality.

Early is on time, on time is late. You should be on campus at least ten minutes before class. That way, you will be in your seat and ready to go the moment class starts. Problems happen to everyone, so plan accordingly. A professional arrives early and never makes excuses. Spoiler alert: I tend to cold-call late students.

Leaving the room.

Leaving the room during class. We will usually take a break during each class, so barring a genuine emergency, hold off on classroom exits until there is an appropriate break point for all. Leaving the room during class without an extremely good reason is extremely unprofessional. Do it enough and your presence will be stricken from the attendance sheet for that day. See FRCP 12(f).

Email.

From time to time, course-related announcements (such as new online materials or assignment revisions) will be sent to your official St. Thomas Law email account. My transmission to you of a class-related email shall constitute notice and you are responsible for the information contained in any such transmission, whether you read it or not. Cf. FRCP 4(e), FRCP 5(b)(2)(E). Check your email regularly.

Disclosure, Candor, and Attribution policy: i.e., non-plagiarism: I take this stuff seriously, so read carefully.

Technology.

Class recordings. Class is highly discussion-based and absent exceptional circumstances, will not be recorded. Neither may you record any portion of class or screenshot any materials without my permission. However, as an exception to that rule, you may take screenshots of display materials during class with your cellphone without prior permission. Recording otherwise requires prior written permission from me.

Laptops and tablets. As you know from the sections above reading digital casebooks, I encourage law students to develop professional digital competency. So does the Florida Bar. Laptops and tablets are therefore permitted. In fact, you might find multiple devices to be useful, such as having one device open for note-taking and another for viewing the casebook or other materials, particularly for students using the digital casebook and interested in developing their professional digital skills. I am also a big believer in the power of a good stylus such as with an iPad or a Surface Pro.

Phones. Cellphones may only be used when I indicate (I use them sometimes to poll the class). Your phone must otherwise be silenced and put away.

Proper use of technology. As the superhero trope goes, with great power . . . well, you know. Use the privilege of classroom technology responsibly and smartly. So don’t abuse my willingness to encourage technology as the privilege is revocable. No screwing around on your computer. I’ll walk around the classroom and kick you out if I find you surfing Amazon or playing Fortnite or the like. Regarding working smartly, don’t be a stenographer (the person who types up every word a witness says at a deposition or trial). Writing down every word is a horrible way to learn as the words will flow from my mouth to your fingers without taking a pit stop at your brain. So another part of being a law student/lawyer is learning how to take intelligent notes. Don’t fall into the trap of writing down every word, as not every word I say is that interesting or important. For that reason, another approach you might take is to take notes by hand and them type them up after class as part of your post-class work.

REVISIONS AND AMENDMENTS

This syllabus sets out policies and guidelines to cover reasonably foreseeable and commonly occurring situations. It does not attempt to cover all possibilities. The syllabus and assignments may be revised as I deem necessary, for any reason, with written notice to you through this website or email.