601:531. TRADEMARK CLEARANCE OPINION DRAFTING (2) S
This skills course will simulate a common trademark practice situation. Clients ask lawyers for advice concerning whether a proposed trademark can function as a trademark, and whether it might be confusingly similar to third party trademarks. Lawyers evaluate the proposed trademark to determine whether it can function as a trademark, conduct a preliminary online search of registered trademarks, and commission a professionally performed search for possibly relevant third party registered and common law trademarks. Lawyers then review the professional search results (usually a 25 – 50 page report) and advise the client whether the proposed trademark can be used as proposed, or possibly with some recommended changes. The process concludes with a full, reasoned opinion of counsel describing the opinion, the factual basis for the opinion, the reasoning that supports the opinion.
The first three weeks of this course will be a classroom component including a short review of substantive trademark law, and a deeper dive into the law that governs reasoned opinions of counsel and the contents of such an opinion.
Students will then begin a skills exercise. A simulated client trademark clearance problem will be provided. We have been given access to trademark clearance databases by Wolters Kluwer Compumark (a leading trademark search firm). Wolters Kluwer Compumark will also provide a professionally prepared trademark clearance search report. The first step in the skills project will be a short memo on whether the proposed trademark is capable of functioning as a trademark for the goods in question. Second, students will conduct a preliminary search using the donated Wolters Kluwer Compumark data bases. The last part of the exercise will be drafting a formal opinion of counsel, likely a 20 – 25 page document. At each step, students will submit a draft for ungraded comment, and a final version to be graded. Ungraded comments during the skills exercise will be provided during meetings with the instructor, and we will not meet as a class after the first three weeks of the semester.