Trademark Prosecution and Practice Before the USPTO, 1st edition

by Dana Robinson
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The process of obtaining a federal trademark registration is a process that few consumers appreciate. There is substantial work that goes into "prosecuting" a trademark through the process, and the work requires expertise. As a law student in the 1990's I took a course called IP Survey, when the text was in its first iteration (Intellectual Property in the New Technological Age 1997 by Peter Menell, Mark Lemley, Robert Merges). At the time, the primary resources for learning trademark prosecution was either a doctrinal casebook, the TMEP, and McCarthy. 

Over the course of my practice, I found myself using my past briefs as teaching tools, and realized that it was a quicker path to understanding the process than sifting through the TMEP. While McCarthy's treatise is still my "go to" resour... Read morece, I found that law students and new practitioners needed to see how the arguments were formulated as much as seeing the black letter law, statutes and cases. Over the course of many years, I assembled my briefs into sections, and with the help of many law students, put the office actions and responses into a single volume, which is now what I'll call a casebook, but is actually more of a practice guide. 

The casebook/ practice guide is open source, and as close to free as one can be without me hosting a website like Barton Beebe does for the best doctrinal casebook on trademark law (which my law students are thankful for, of course). I encourage students and practitioners to poach sections of my briefs for style and arguments, but encourage everyone to check the cases, statutes, current TMEP, and of course McCarthy on Trademarks as they develop a library of briefs of their own. I also welcome colleagues from the practice to join me as co-editors and continue the work forward. 

The book is an ideal resource for clinical programs at law schools, which can use the book as reference material and as a "lump of clay" for students to use the structure of my arguments to formulate their own briefs for pro bono and clinical work. 

Edition: 1st

Published: May 25, 2021

Dana Robinson is adjunct professor of law and director of the USPTO Trademark Clinic at California Western School of Law. Dana helped co-launch and direct the IP Clinic at University of San Diego School of Law, where he was adjunct faculty and taught trademark courses, and IP Survey. Dana graduated from USD School of Law in 1999, cum laude. His expertise includes a broad base of intellectual property law that covers copyright, trademark, patent, trade secret and international intellectual property.  His publications include Digital Rights Management Lite: Freeing Ebooks from Reader Devices and Software, 17 Va. J.L. & Tech. 152 (2012).  

Dana has filed, managed and prosecuted thousands of trademarks over the course of his law practice career. He has represented clients in numerous trademar... Read morek infringement actions, as well as cancellations, oppositions and appeals before the Trademark Trial and Appeal Board.  His practice includes managing international trademark estates in over 40 countries.  Dana has worked on domain name disputes, beginning with complex multi-party cybersquatting actions. Dana's trademark work has included the famous brands of many Las Vegas resorts, such as Bellagio, Mandalay Bay, Wynn, Palms, Treasure Island, Station Casinos, Stratosphere, Golden Nugget, and Stratosphere. Dana has also worked on hundreds of trademarks for non-casino clients, including La Terra Fina, Sunbelt Communications, Teligence Communications, UNLV, HyLoft, iGolf.com, and many others.

Dana has used his experience as a seasoned trademark prosecution attorney to teach and mentor, and compiled his cases into a practice guide that others can use for teaching trademark prosecution before the USPTO. 

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