CLIP Guides
University of Connecticut School of Law Library
Connecticut Legal Information Portal
TRADEMARK LAW
This guide provides an overview of trademark law materials available in the University of Connecticut Law School Library and online. Most of the library materials are located on the third and fifth floors. To locate specific items, please consult the online catalog or ask a reference librarian for assistance. A. B. C. D. E. F. DICTIONARIES AND ENCYCLOPEDIAS HANDBOOKS AND HOW TO GUIDES PRACTICE MATERIALS MAJOR TREATISES AND LOOSELEAFS JOURNALS AND NEWSLETTERS PRIMARY MATERIALS LEGISLATIVE Statutes Legislative History JUDICIAL Cases Case Finding Tools ADMINISTRATIVE Regulations Agency Decisions FOREIGN AND INTERNATIONAL TRADEMARK SEARCHING WEB SITES AND OTHER ONLINE SOURCES
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DICTIONARIES AND ENCYCLOPEDIAS Intellectual Property Law Dictionary (2004) Rachel Gader-Shafran (Reference - KF2977.5.G33) McCarthy’s Desk Encyclopedia of Intellectual Property, 3rd ed. (2004) Thomas J. McCarthy (Reference - KF2976.4.M38 2004)
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HANDBOOKS AND HOW TO GUIDES Intellectual Property: Patents, Trademarks and Copyright in a Nutshell, 4th ed. (2007) Arthur R. Miller and Michael H. David (Reserve - KF2980.M52 2007)
Intellectual Property Handbook: A Practical Guide for Franchise Business and Intellectual Property Counsel Practitioners (2005) William A. Finkelstein and James R. Sims, es. (5th floor - KF2979.I57 2005) Patent, Copyright & Trademark: An Intellectual Property Reference, 9th ed. (2007) (3rd floor Reading Lounge - KF2980.P38) Trademark: Legal Care for Your Business and Product Name, 8th ed. (2007) Stephen Elias (3rd floor Reading Lounge - KF3180.M28) What Is a Trademark? (2006) ABA, Section of Intellectual Property Law (5th floor - KF3180.Z9 W43 2006) C. PRACTICE MATERIALS Kane on Trademark Law: A Practitioner’s Guide, 5th ed. (Looseleaf) Siegrun D. Kane (5th floor - KF3180.K362) (also on Westlaw) Trademark Manual of Examining Procedure Online on Lexis and the U.S. Patent and Trademark Office web site http://tess2.uspto.gov/tmdb/tmep/ Trademark Practice and Forms (Looseleaf) Karla Shippey et al, eds. (5th floor - KF3180.S52 1998) Trademark Trial and Appeal Board Practice and Procedure Gary D. Krugman (Westlaw) D. MAJOR TREATISES AND LOOSELEAFS McCarthy on Trademarks and Unfair Competition, 4th ed. (Looseleaf) J. Thomas McCarthy (5th floor - KF3180.M3 1996) (also on Westlaw) Explains and analyzes trademark law, with concise analysis of cases and statutes, and provides how-to advice on registering and protecting trademarks. Analyzes significant changes in federal trademark law as a result of the 1988 Trademark Law Revision Act, the Trademark Clarification Act, and the various amendments to the Lanham Act. The Law of Unfair Competition, Trademarks and Monopolies, 4th ed. (Looseleaf) Rudolf Callmann (5th floor - KF1609.C33 1981) (also on Westlaw) Comprehensive analysis of the law of unfair competition as it relates to trademarks, including an examination of cases as well as the law’s theoretical underpinning. Includes the text of important statutes and regulations and a table of trademarks, trade names, and slogans. Trademark Protection and Practice (Lexis - Gilson on Trademarks) Surveys the law of trademarks in the U. S. and provides extensive case analysis, a wide variety of forms, practice guides and checklists, extensive legislative history, and a series of reference guides. 2
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JOURNALS AND NEWSLETTERS To locate articles on trademark law in legal journals, consult the two online legal periodical indexes which can be accessed from the library’s web page: Index to Legal Periodicals, which covers articles published in all major legal journals from 1918 to the present, and LegalTrac (Legal Resource Index), which covers 1980 to the present. The library’s collection includes the following specialized journals and newsletters: The Trade-mark Reporter (U. S. Trademark Association) (K24.R26 - latest on Reserve; earlier on 1st floor) (Library has 1964 to present) Also available online on Hein Online (1911 to 2005), Lexis (1941 to present), and Westlaw (1990 to present). Journal of the Patent and Trademark Office Society (K10.O8892 - latest on Reserve; earlier on 1st floor) (Library has 1918 to present) Also available online on Hein Online (1918 to 2005), Lexis (1999 to present), and Westlaw (1994 to present). BNA’s Patent, Trademark and Copyright Journal (online on Lexis and Westlaw and at http://pubs.bna.com/ip/BNA/PTC.NSF/highlights/highlights?OpenDocument&login=1 ) Weekly publication providing news of important cases, statutes, trends, and other key developments in trademark law, with coverage from 1996 to present. BNA’s Patent, Trademark and Copyright Law Daily (online on Lexis and Westlaw and at http://pubs.bna.com/ip/BNA/PTD.NSF/highlights/highlights?OpenDocument&login=1) Daily publication providing news of important trademark law cases, regulatory developments, and trends, with coverage from 2001 to present. Trademarks: Mealey’s Litigation Report (Lexis) Monthly publication providing in-depth coverage of trademark litigation, with coverage from 2000 to present.
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PRIMARY MATERIALS LEGISLATIVE Statutes The trademark laws are codified in Title 15, Chapter 22, of the United States Code. The first trademark law was enacted in 1870, but was later declared unconstitutional. Subsequent laws were passed in 1881 and 1905, but they were limited in scope. The first substantial revision of federal trademark legislation was the Lanham Act (Trademark Act of 1946). This act has been amended numerous times, with the Trademark Law Revision Act of 1988 being its first overall revision. The current trademark law is the Lanham Act, 15 U.S.C. 1051 et seq, as amended.
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The text of the current law can be found in a number of sources, including in the print volumes of the U.S. Code itself. Online sources include the following: Cornell Legal Information Institute - Trademarks - Title 15 - Chapter 22 http://uscode.law.cornell.edu/uscode/html/uscode15/usc_sup_01_15_10_22.html U. S. Patent and Trademark Office - U. S. Trademark Laws http://www.uspto.gov/web/offices/tac/tmlaw2.pdf Lexis - USCS - Title 15 Commerce and Trade Westlaw - Federal Intellectual Property - U.S. Code Annotated Legislative History To compile a legislative history for trademark legislation, you can use general legislative history sources (see the library research guide on Federal Legislative History for instructions). Other sources that provide the full text of legislative history documents include: Franklin Pierce Law Center - Legislative IP Acts History Archive http://ipmall.info/hosted_resources/lipa/lipa_trademarks_index.asp Selected documents related to the legislative history of pre-Lanham Act legislation, Lanham Act revision legislation, the Trademark Law Revision Act, and other trademark laws. The Trademark Law Revision Act of 1988 (Public Law 100-667): The Legislative History, Reports, Testimony, and Annotated Statutory Text (5th floor - KF3177/123/A15 1989) Anticybersquatting Consumer Protection Act: A Legislative History (5th floor - KF3177.19.A15 2002) Also available on Hein Online at http://www.heinonline.org/HOL/Index?index=leghis/acap&collection=leghis JUDICIAL Cases Trademark infringement actions may be litigated in either the state or federal courts, since state courts have concurrent jurisdiction with federal courts over trademark and unfair competition actions brought under the Lanham Act. United States Patents Quarterly (5th floor - KF3093.A2 U5 - 1929 to present) Online at http://iplaw.bna.com/iplw/, Lexis and Westlaw Case reporter covering patent, trademark, and copyright cases from the federal courts, the state courts, U. S. Patent and Trademark Office tribunals, and the International Trade Commission. Weekly advance sheets are replaced monthly by bound volumes. Decisions include headnotes summarizing points of laws, with each headnote assigned a classification number. Use the main index or the classification outline, both located in the current binders, to find relevant classification numbers. 4
Decisions of the Commissioner of Patents and the U.S. Courts in Patent and Trademark Cases (5th floor - KF3093.3 A2 U5 - 1869 to 1964) Lexis: Federal and State Trademark Cases - Coverage varies by court Westlaw: Federal Intellectual Property - Cases - 1789 to present Case Finding Tools United States Patents Quarterly Cumulative Digest (5th floor - KF3093.A2 U52 - 1929 to 2001) Includes a topical index and table of cases. ADMINISTRATIVE Regulations Trademark regulations are located in Titles 19 and 37 of the Code of Federal Regulations. Proposed and final regulations, along with administrative notices, are first published in the Federal Register and in the notices section of the Official Gazette of the U. S. Patent and Trademark Office: Patents (Micro Cabinet 18 - 1993-2002; latest 52 weeks online at http://www.uspto.gov/web/patents/patog/). Federal Register notices related to trademark regulations are also located at http://www.uspto.gov/web/menu/current.html#register. Copies of the trademark regulations can also be found in the following sources: -U. S. Patent and Trademark Office website http://www.uspto.gov/web/offices/tac/tmlaw2.pdf -Lexis - CFR Titles 19 (Customs Duties), 37 (Patent, Trademark & Copyright) -Westlaw - Federal Intellectual Property - Code of Federal Regulations - Current -U. S. Code Annotated, Title 15, Appendix contains Title 37 of the CFR, Part 2, Rules of Practice in Trademark Cases Agency Decisions When a trademark application is submitted to the U. S. Patent and Trademark Office, it is reviewed by an examiner, who determines whether the application meets the requirements for federal registration. A final refusal of a trademark application may be appealed to the Trademark Trial and Appeal Board (TTAB). The TTAB also conducts “interference” proceedings when there is a conflict over trademarks that closely resemble each other. Decisions of the TTAB can be found in the following sources: -U. S. Patent and Trademark Office website - 1996 to present http://www.uspto.gov/web/offices/dcom/ttab/index.html -Franklin Pierce Law Center - IP Mall - TTAB Final Decision Archive -1984 to 1996 http://ipmall.info/hosted_resources/ttab_decisions.asp -Lexis - U. S. Trademark Trial & Appeal Board Decisions - 1982 to present -Westlaw - Federal Intellectual Property-Patent & Trademark Office Decisions - 1987 to present 5
-U. S. Patents Quarterly (KF3093.A2 U5-1929 to present); online at http://iplaw.bna.com/iplw The U. S. Patent and Trademark Office Commissioner for Trademarks hears cases based on petitions filed in a variety of matters. Decisions of the commissioner can be found in the following sources: -U.S. Patent and Trademark Office - Final Decisions http://www.uspto.gov/web/offices/com/sol/foia/tac/tac.htm -Lexis - USPTO Commissioner of Patents and Trademark Decisions - 1981 to present -Westlaw - Federal Intellectual Property-Patent & Trademark Office Decisions - 1987 to present G. FOREIGN AND INTERNATIONAL BNA World Intellectual Property Report (online on Lexis and Westlaw and at http://pubs.bna.com/ip/BNA/WIPR.NSF/highlights/highlights?OpenDocument&login=1) Monthly publication providing news and analysis of developments in the regulation and enforcement of intellectual property rights worldwide, with coverage from 1997 to present. Domain Name Law and Practice: An International Handbook (2005) Torsten Bettinger, ed. (4th floor - K1555.B48 2005) Comprehensive guide to the different registration procedures for domain names, together with an analysis of the law that has developed at both the national and international levels. Provides the registration requirements and domain name laws of 27 countries, with an analysis of the relevant case law, and an examination of the ADR procedure set out in the Uniform Domain Name Dispute Resolution Policy, with an analysis of key panel decisions. Famous and Well-Known Marks: An International Analysis, 2nd Ed. (2004) Frederick Mostert (4th floor - K1555.4.M67) Guide to the principles and practice of the international law of famous and well-known trademarks. Experts from 18 key countries around the world describe how their jurisdictions interpret and enforce the general laws and principles. Also includes an extensive chapter on the legislative history of the international protection of famous and well-known marks. International Trademark Treaties with Commentary (2004) Ellen Winner and Aaron Denberg (4th floor - K1553.W57 2004) Practical manual on trademark agreements that provides guidance to practitioners in using treaties to obtain and enforce trademark rights throughout the world. Provides information on the purpose of each treaty, the substantive rights and procedures covered, the enforcement provisions, the member countries, and how to use the treaties in designing international trademark strategies. The text of the treaties is included in an appendix. Trademarks Throughout the World, 4th ed. (Anne-Laure Covin) (Westlaw) Summarizes the significant features of trademark laws from more than 180 countries and jurisdictions. It includes classifications for goods and services and features the complete text of current international agreements. It also provides an international directory of trademark law practitioners.
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World Intellectual Property Organization (WIPO) http://www.wipo.int/portal/index.html.en Specialized agency of the United Nations with a mandate to promote the protection of intellectual property throughout the world. Site includes the text of WIPO-administered treaties; a database of IP laws from a wide range of countries and regions; and a trademark database portal. World Trademark Law and Practice (Lexis) Complete coverage of trademark law for 35 major jurisdictions and summary coverage for an additional 100. Provides textual analysis of the law, along with solutions for day-to-day practice situations and practice tools including checklists and forms. EU Trademark Office http://oami.europa.eu/en/office/default.htm Manages the “community trademark” system, which grants a uniform right valid in the member states of the European Union. Legal materials provided on the site include the national trademark laws of many of the EU nations; the rules and regulations regarding the community trademark; and the decisions of the trademark office. H. TRADEMARK SEARCHING Full text trademark registrations can be searched using the following databases: -U. S. Patent and Trademark Office - Trademark Electronic Search System (TESS) - contains all currently registered and pending trademarks http://tess2.uspto.gov/bin/gate.exe?f=tess&state=itkh2f.1.1 -Lexis: Federal Trademarks - 1884 to present -Westlaw: TRADEMARKSCAN - U.S. - Federal (Dialog) - 1884 to present Official Gazette of the U. S. Patent and Trademark Office: Trademarks (Micro Cabinet 18 1993 to present; most recent 5 issues online at http://www.uspto.gov/web/trademarks/tmog/) Weekly publication that lists all trademarks registered that week and presents all trademarks as they are “published for opposition,” including all bibliographic information and a black and white image. USPTO Design Search Code Manual - Online at U. S. Patent and Trademark Office http://tess2.uspto.gov/tmdb/dscm/index.htm I. WEB SITES AND OTHER ONLINE SOURCES U. S. Patent and Trademark Office - Trademarks http://www.uspto.gov/main/trademarks.htm Federal agency of the Department of Commerce whose major functions are the examination and issuance of patents and the examination and registration of trademarks. Trademark information includes U. S. trademark laws and regulations, along with the rules of practice applicable in trademark cases; Trademark Trial and Appeal Board information, including the TTAB Manual of Procedure, board decisions, and sample forms and guidelines; trademark forms; and the Trademark Electronic Business Center, which allows you to search, file, and check the status of trademark registrations online.
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Cornell Legal Information Institute - Trademark http://www.law.cornell.edu/wex/index.php/Trademark This site provides electronic editions of core legal trademark materials, including U.S. and state statutes; federal agency regulations; federal and state court decisions; and international treaties and conventions. Jurist: The Legal Education Network - Intellectual Property Guide http://jurist.law.pitt.edu/sg_ip.htm Collection of links to IP-related books, articles, journals, legislation, news, and associations. Franklin Pierce Law Center: The Intellectual Property Mall http://www.ipmall.fplc.edu/ Comprehensive collection of IP-related web links, as well as a number of intellectual property resources not freely available on the web, including the full text of IP-related Congressional Research Service reports from 1993 to the present; compilations of trademark-related legislative history documents; and an archive of Trademark Trial and Appeal Board decisions. All About Trademarks http://www.ggmark.com/ Site provides a large collection of links to useful trademark resources, trademark laws from over 50 different countries, and links to federal and state trademark statutes. Nolo - Trademark Law http://www.nolo.com/resource.cfm/catID/D8932879-DC34-43DF-BF65FC92D55FEE5D/31 0/274/ Site geared for the non-lawyer provides articles, glossary of terms, and detailed FAQ section that explains the types of trademarks; conducting a trademark search; filing a federal trademark application; and more. Current Trademark Literature http://web.austin.utexas.edu/law_library/trademark/ This service for keeping informed of current articles related to U. S. trademark law provides the first page of each relevant article. You can also subscribe to an RSS feed to receive automatic updates. The Trademark Blog http://www.schwimmerlegal.com/ Blog on current trademark and copyright developments. The TTABlog http://thettablog.blogspot.com/ Blog on developments at the U.S. Trademark Trial and Appeal Board.
J. Fusaris, UConn Law School Library, 11/07 (Updated 8/08)
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