Active Outline

General Information

Course ID (CB01A and CB01B)
PARAD072.
Course Title (CB02)
Trademarks Law
Course Credit Status
Credit - Degree Applicable
Effective Term
Fall 2024
Course Description
This is an overview of the paralegal's role in trademark practice, including federal and foreign trademark registrations, prosecution of applications, maintenance, trademark clearance, and enforcement.
Faculty Requirements
Course Family
Not Applicable

Course Justification

This course examines the legal process and relevant laws governing trademark practice in the United States and internationally. It belongs on the Paralegal Studies AA degree and is CSU transferable.

Foothill Equivalency

Does the course have a Foothill equivalent?
No
Foothill Course ID

Course Philosophy

Formerly Statement

Course Development Options

Basic Skill Status (CB08)
Course is not a basic skills course.
Grade Options
  • Letter Grade
  • Pass/No Pass
Repeat Limit
0

Transferability & Gen. Ed. Options

Transferability
Transferable to CSU only

Units and Hours

Summary

Minimum Credit Units
4.0
Maximum Credit Units
4.0

Weekly Student Hours

TypeIn ClassOut of Class
Lecture Hours4.08.0
Laboratory Hours0.00.0

Course Student Hours

Course Duration (Weeks)
12.0
Hours per unit divisor
36.0
Course In-Class (Contact) Hours
Lecture
48.0
Laboratory
0.0
Total
48.0
Course Out-of-Class Hours
Lecture
96.0
Laboratory
0.0
NA
0.0
Total
96.0

Prerequisite(s)

ADMJ D009. or PARA D009. or POLI D009. or PARA D094. (either course may be taken concurrently) or professional experience appropriate to the topic

Corequisite(s)

Advisory(ies)

EWRT D001A or EWRT D01AH or ESL D005.

Limitation(s) on Enrollment

Entrance Skill(s)

General Course Statement(s)

Methods of Instruction

Lecture and visual aids

Discussion of assigned reading

Collaborative learning and small group exercises

Homework and extended projects

In-class exploration of Internet sites

Assignments

  1. Oral
    1. Small group/class discussions and analysis of hypothetical legal problems
    2. Individual and/or small group presentations of assignments and projects
  2. Written
    1. Midterms
    2. In class and take-home written assignments
    3. Objective, short essay final examination
  3. Reading and Library
    1. Assigned readings and research from text and other references, including Internet materials
    2. Assigned readings from case reporters and codes

Methods of Evaluation

  1. Oral and written assignments will be evaluated on the ability of the student to show an understanding of trademark registration, maintenance, clearance, and enforcement practice and procedure, and the role of the paralegal in the protection of trademarks and in disputes surrounding them.
  2. Midterms and one final exam evaluated on the ability of the student to demonstrate an understanding of the law concerning Trademarks and the means to protect them.

Essential Student Materials/Essential College Facilities

Essential Student Materials: 
  • None
Essential College Facilities:
  • None

Examples of Primary Texts and References

AuthorTitlePublisherDate/EditionISBN
Bouchoux, Deborah, "Intellectual Property: The Law of Trademarks, Copyrights, Patents and Trade Secrets", 5th Edition, New York: Cengage, 2018

Examples of Supporting Texts and References

AuthorTitlePublisher
Examples of Supporting Texts and References
"Patents, Copyright & Trademark: an Intellectual Property Desk Reference", 14th Edition, Richard Stim, Editor, Berkeley: Nolo Press, 2016.
International Trademark Association (https://www.inta.org/Pages/Home.aspx)
United States Copyright Office (http://www.loc.gov/copyright/)
United States Copyright Office (http://www.loc.gov/copyright/)
California Secretary of State Office (http://www.sos.ca.gov)
California codes (https://leginfo.legislature.ca.gov/)
Federal law and case law (http://www.findlaw.com)

Learning Outcomes and Objectives

Course Objectives

  • Distinguish between the types of Intellectual Property, and identify what constitutes a trademark
  • Explain general legal principles protecting trademarks
  • Locate statutes and case law governing trademark registration, maintenance, and protection
  • Describe the process for trademark selection and clearance
  • Outline the procedures to obtain and maintain trademarks under Federal law
  • Describe the process for handling trademark disputes
  • Describe the role of foreign counsel and the paralegal in the clearance, prosecution, and enforcement of trademarks internationally
  • Examine the impact of and challenges presented by social media and the internet
  • Explain the role ethics plays in the clearance, protection, maintenance, and protection of trademarks
  • Describe the role of foreign counsel and the paralegal in the clearance, prosecution, and enforcement of trademarks internationally.
  • Assess cultural, gender, age and other factors relevant to protect trademarks

CSLOs

  • Demonstrate an understanding of what constitutes a Trademark and evidence of use of Trademarks.

  • Demonstrate an understanding of the trademark clearance process and the paralegal's role in that process.

  • Demonstrate an understanding of the paralegal's role in international trademark practice.

  • Outline the appropriate procedures of the federal Trademark registration and maintenance process.

  • Identify the rules and laws governing federal Trademark registration and options for enforcement.

Outline

  1. Distinguish between the types of Intellectual Property, and identify what constitutes a trademark
    1. Trade Secrets
    2. Trademarks and Service Marks
    3. Copyrights
    4. Patents
    5. Other intellectual property
  2. Explain general legal principles protecting trademarks
    1. Historical protection of intellectual property
    2. Constitutional provisions
    3. Contract provisions
    4. Statutory provisions
  3. Locate statutes and case law governing trademark registration, maintenance, and protection
    1. Federal law
      1. Federal statutes
      2. Federal regulations
      3. Federal cases
    2. California law
      1. California statutes
      2. California regulations
      3. California cases
  4. Describe the process for trademark selection and clearance
    1. USPTO website
    2. Preliminary searches on vendor databases
    3. Comprehensive searches conducted by vendor
    4. Searches conducted by foreign counsel
  5. Outline the procedures to obtain and maintain trademarks under Federal law
    1. Federal law - Legal requirements and procedures
    2. USPTO website
    3. Forms and fees
  6. Describe the process for handling trademark disputes
    1. Civil and criminal statutes
    2. Trademark Trial and Appeals Board
      1. Federal statutes
      2. Rules and regulations
      3. Procedures
    3. Remedies, punishment, and sanctions
    4. Preparation for trial or informal and alternative dispute resolution
  7. Describe the role of foreign counsel and the paralegal in the clearance, prosecution, and enforcement of trademarks internationally
    1. Overview of the general principles of international trademark protection
    2. Examination of treaties, protocols, and other rules, laws, and regulations governing foreign trademark registration
    3. Overview of foreign trademark searches
    4. Overview of foreign trademark filing
  8. Examine the impact of and challenges presented by social media and the internet
    1. Federal law
      1. Federal statutes
      2. Federal rules and regulations
      3. Federal cases
    2. California law
      1. California statutes
      2. California rules and regulations
      3. California cases
    3. Domain name and social media-related disputes
  9. Explain the role ethics plays in the clearance, protection, maintenance, and protection of trademarks
    1. Analyze ethics rules, statutes, and case law
    2. Examine ethical issues surrounding trademarks, including competence, diligence, communication, confidentiality, and loyalty.
  10. Describe the role of foreign counsel and the paralegal in the clearance, prosecution, and enforcement of trademarks internationally.
    1. Analysis of treaties and protocols for obtaining foreign trademarks
    2. Examination of means for obtaining foreign trademark registration
    3. Overview of foreign trademark searches
    4. Overview of foreign trademark filing
  11. Assess cultural, gender, age and other factors relevant to protect trademarks
    1. The paralegal role in obtaining factual information
    2. The client interview
    3. Understanding the client
Back to Top