Intellectual Property

United States Resources

The United States Patent and Trademark Office
The United States Patent and Trademark Office (USPTO) is the federal agency for granting U.S. patents and registering trademarks. In doing this, the USPTO fulfills the mandate of Article I, Section 8, Clause 8, of the Constitution that the legislative branch "promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries."

• The USPTO has a summary handout about the Basic Facts About Trademarks.
• The USPTO also has a helpful guide to trademark laws in each of the 50 states.

Arizona State Resources

Arizona Secretary of State
The Arizona Secretary of State's Informational Page on Arizona Trademark Law. This includes a link to the Arizona Online Trade Name / Trademark Program.

ASU Libraries:  Trademarks
ASU Libraries has a guide to finding information on trademarks such as fees, forms, terms and searching techniques for both U.S. and International trademarks.

Examples and Explanations:  Intellectual Property (Stephen M. McJohn, 2021)
Using Examples & Explanations pedagogy, this study guide covers the core concepts of intellectual property law, including copyright, patent, trademark, and trade secrets. Also on Aspen Learning Library (available on campus, remotely with ASURITE, or with an ASU Aspen Learning Library account).

Intellectual Property:  Patents, Trademarks, and Copyright in a Nutshell (Arthur R. Miller, 2018)
This text, by famed Harvard professor Arthur Miller, includes patents, trademarks, and copyrights. Further, it addresses torts and property; antitrust and government regulation; concepts of federalism and state and federal conflicts. Also on West Academic (available on campus, remotely with ASURITE, or with an ASU West Academic account).

Mastering Trademark and Unfair Competition Law (Lars S. Smith & Llewellyn Joseph Gibbons, 2013)
Mastering Trademark and Unfair Competition Law provides a clear and concise presentation of the basic principles underlying and the challenges facing a student or practitioner of trademark law in a digital age.

Trademark and Unfair Competition in a Nutshell (Mark D. Janis, 2021)
This text provides a comprehensive treatment of the law of trademark, unfair competition, false advertising, and the right of publicity. Also on West Academic (available on campus, remotely with ASURITE, or with an ASU West Academic account).

Understanding Trademark Law (Mary LaFrance, 2020)
This book provides an introduction to the federal laws protecting registered trademarks and trade dress, as well as the broad array of federal and state unfair competition doctrines which protect unregistered trademarks and trade dress.

Trademark Manual of Examining Procedure
The TMEP provides trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the current law, practices, and procedures relative to prosecution of applications.

Trademarkia
Trademarkia is a free world-wide search engine for finding trademarks.

The resource below provide information on how to respond to a United States Patent and Trademark Office (USPTO) office action. The first two resources are freely available online; the resources from Lexis and Westlaw require subscription access.

Responding to Office Actions (USPTO)
The United States Patent and Trademark Office (USPTO) may issue several different types of office actions about a trademark application. This page focuses on office actions that trademark examining attorneys send during the application process. It details what an office action is, provides information on the deadline on how to file a timely response, how to file a response and ensure it is complete, and how to respond to common refusals or requirements.

Responding to Trademark Office Actions (American Bar Association)
This American Bar Association publication offers tips and checklists for successfully responding to common situations in which a USPTO examining attorney has issued a refusal to register a trademark.

Lexis+ Practical Guidance (Lexis+ password required)

• Trademark Office Actions:  Responding to an Office Action Video
  This video answers some common questions about responding to nonfinal or final office actions and what a trademark applicant can do to move the application forward in the registration process.
• Trademark Registration and Maintenance Resource Kit
  This resource kit provides an overview of trademark registration and maintenance, including drafting, filing, and prosecuting trademark applications; and maintaining and renewing trademark registrations, and other post-registration issues. This resource kit includes Practical Guidance materials on each of these topics, including detailed practice notes, templates, and checklists.
• Trademark Office Actions:  Responding to a Surname Refusal
  This practice note addresses how to respond to a refusal by an examining attorney (or examiner) at the U.S. Patent and Trademark Office (USPTO) that a trademark is primary merely a surname under Section 2(e)(4) of the Lanham Act. Topics discussed include the legal standard for surname refusals, guidance on potential response options, and strategies for avoiding a surname refusal.
• Trademark Office Action Response:  Unacceptable Specimen of Use
  This model template provides a template for responding to a USPTO office action in which the examining attorney refused registration on the ground that the specimen submitted with the application does not show use of the applied-for mark in commerce. The document includes expandable drafting notes that provide information on language and context.
• Trademark Office Action Response:  Mere Descriptiveness
  This model template provides a template for responding to a USPTO office action in which the examining attorney refused registration on the ground that the mark is merely descriptive. The document includes expandable drafting notes that provide information on language and context.

Westlaw Practical Law (Westlaw password required)

• Trademark Office Action Response Toolkit
  This Practical Law toolkit links to a number of resources designed to help trademark applicants and their counsel review and respond to U.S. Patent and Trademark Office (USPTO) trademark refusals to register and post-registration office actions, with supporting case law and sample language for specific refusals.
• Trademark Office Actions:  Responding to Office Action
  This practice note discusses U.S. Patent and Trademark Office (USPTO) trademark refusals to register and post-registration office actions. Topics discussed include the ex parte trademark examination process, bases for refusal, key considerations for responding to office actions, how to deal with final refusals, and ways to avoid office actions.
• Trademark Office Action Response
  This template provides model language that a U.S. trademark registration applicant can use in drafting a response to a trademark office action. The document includes integrated notes and important explanations and drafting tips.

The Trademark Blog
Martin Schwimmer is a partner in Leason Ellis, an IP law boutique in White Plains, NY. His practice is concentrated in the area of U.S. and international trademark law and domain name counseling, prosecution, and litigation.

Trademark Lawyer Magazine
A blog produced by CTC Legal Media that covers modern issues in trademark.

Trademark Now
TrademarkNow, a Corsearch company, provides a blog that covers US and International Trademark issues.

The TTABlog
A longstanding trademark blog that focuses on decisions of the Trademark Trial and Appeal Board.