Chart of Assignments
Trademarks, Fall 2025
Eric E. Johnson, OU Law

Assignments updated as of: November 26, 2025.

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→ Jump ahead to: Week 15.

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Day by Day:
Week No 1
MONDAY August 25 No 1
1. About the Course
No reading required for this for today.
2. Orientation to Trademark Law, Policy, Theory and Context
No reading required for this for today.
TUESDAY August 26 No 2
2. Orientation to Trademark Law and its Context, continued
Read IPS-M chapter M-0.
Read Nanotreatise on Copyright Law in the United States.
Read Nanotreatise on Patent Law in the United States.
Week No 2
MONDAY September 1
Labor Day - no class
TUESDAY September 2 No 3
2. Orientation to Trademark Law, Policy, Theory and Context, continued
Read Grynberg Chapter 1, pp. 1-17.
Read IPS-M chapter M-1.
Read Nanotreatise on Right of Publicity Law in the United States.
Week No 3
MONDAY September 8 No 4
2. Orientation to Trademark Law, Policy, Theory and Context, continued
Skim over Champion Spark Plug Co. v. Sanders, on pp. 32-36 of IPS-M, which was in the reading from last class session. Time ran out, and I'd like to give it a few minutes worth of discussion, which I'll do at the beginning of this class.
3. Distinctiveness
Read IPS-M the portion of chapter M-4 on pp. 73-80 (includes Kellogg Co. v. National Biscuit Co. (word mark excerpt)).
Read Grynberg the portion of Chapter 2, pp. 18-32 (includes Zatarains, Inc. v. Oak Grove Smokehouse, Inc.) – read the paragraph on p. 32 labelled "Disclaimers," but then stop.
TUESDAY September 9 No 5
Bring your double-sided printout of the Grynberg book to class today (with your name on pages 1 and 245 if you'd like me to bind them
3. Distinctiveness, continued
No additional reading for this for today; we'll wrap up the discussion on this topic.
4. Secondary Meaning; Acquired Distinctiveness
Re-review the portions of Zatarains (pp. 19-29 of Grynberg) discussing secondary meaning.
Read Grynberg the portion of Chapter 2, pp. 32-34 (Start with the paragraph labelled "Secondary meaning." Stop right before the paragraph that begins "Does the mark function as a mark?").
Week No 4
MONDAY September 15 No 6
1. About the Course, continued
If you haven't yet: read over last year's Trademark Analysis Synthesis [PDF] or [DOCX].
  • (I'll be doing an updated one for this semester, but looking over the 2024 version will give you an idea of how the material can be fit into an organized schema for analyzing trademark issues.)
If you haven't yet: read the Syllabus, including the addendum added 8/31 regarding absence numbers.
5. Genericness
Read Grynberg pp. 38-46
  • Filipino Yellow Pages, Inc. v. Asian Journal Publications, Inc. (9th Cir. 1999)
  • notes on genericness re primary significance and non-word marks
Read Syllabus of USPTO v. Booking.com (U.S. 2020)
Read Grynberg pp. 55-59, 60 (skip over the note "Geographical Indications")
  • notes on genericness, various
Read Grynberg pp. 60-64
  • Elliott v. Google, Inc. (9th Cir. 2017)
TUESDAY September 16 No 7
6. Establishing Rights Through Use
Read Grynberg pp. 175-191
  • problem on "firefly"
  • statutory provisions
  • FN Herstal SA v. Clyde Armory Inc. (11th Cir. 2016)
  • notes on intent-to-use registrations, how much use?, bona fide uses, analogous use, abandonment, markets, whose use?, purchasing priority, fictional use, lawful commerce, tacking
  • Hana Financial, Inc. v. Hana Bank (U.S. 2015) [only the first two pages]
Week No 5
MONDAY September 22 No 8
6. Establishing Rights Through Use, continued
No new reading. We'll cover what was left over from last time.
7. Ownership and Priority
Read IPS-M from page M-60 to page M-71
  • Burger King v. Hoots (7th Cir. 1968) ("Burger King")
  • Bell v. Streetwise Records (D. Mass 1986) ("New Edition")
TUESDAY September 23 No 9
8. Deceptiveness, Geography, Names, and Offensive Word Marks
Read Grynberg pp. 250-260 (start at heading “Deceptive ...” stop at heading “Iancu”)
  • In re Budge Manufacturing (Fed. Cir. 1988) ("Lovee Lamb")
  • geographic exclusions
  • geographical indications
  • false connections, flags, coats of arms, surnames, living people
  • scandalous/offensive marks and the First Amendment
Read Grynberg pp. 59-60 (note on "Geographical Indications")
  • geographical indications
Week No 6
MONDAY September 29 No 10
8. Deceptiveness, Geography, Names, and Offensive Word Marks, continued
No new reading on this topic. We'll continue from the previous class.
9. Trademark Transactions, Goodwill, Licensee Estoppel, and Abandonment
Read Grynberg pp. 223-244
  • statutory provisions
  • licensing
  • abandonment
  • FreecycleSunnyvale v. Freecycle Network (9th Cir. 2010)
  • Wesco v. K.B. & Associates (N.D. Ohio 2001) ("Mattress Warehouse")
  • notes on quality control, naked licensing, merger, etc.
TUESDAY September 30 No 11
9. Trademark Transactions, Goodwill, Licensee Estoppel, and Abandonment, continued
No new reading on this topic. We'll continue from the previous class.
10. Likelihood of Confusion for Word Marks
Read Grynberg pp. 306-321
  • statutory provisions
  • Virgin Enterprises v. Nawab (2d Cir. 2003) ("Virgin" cell phones)
  • notes
Week No 7
MONDAY October 6 No 12
10. Likelihood of Confusion for Word Marks, continued
Read Grynberg pp. 315-331
  • statutory provisions
  • Virgin Enterprises v. Nawab (2d Cir. 2003) ("Virgin" cell phones)
  • notes
11. Use-in-Commerce Requirement for Trademark Infringement
Read Grynberg pp. 287-288, 306-314
  • statutory provisions
  • Radiance Foundation v. NAACP (4th Cir. 2015) (article attacking NAACP on website that solicits donations)
  • notes
TUESDAY October 7 No 13
11. Use-in-Commerce Requirement for Trademark Infringement, continued
No new reading on this topic. We'll continue from the previous class.
Various law related to notions of “unfair competition”
No reading; we'll go through various subjects with lecture and slides.
Week No 8
MONDAY October 13 No 14
Various law related to notions of “unfair competition”
No reading; we'll go through various subjects with lecture and slides.
TUESDAY October 14 No 15
Various law related to notions of “unfair competition”
No reading; we'll go through various subjects with lecture and slides.
Week No 9
MONDAY October 20 No 16
Various law related to notions of “unfair competition”
Read Chapters 1 and 2 of Trade Libel and Defamation: An Open Casebooklet - available as PDF or DOCX.
TUESDAY October 21 No 17
Various law related to notions of “unfair competition”
We'll review and work problems. Please review your notes on what we've covered so far with regard to "Various law related to notions of 'unfair competition'” and these posted slides: FTC and Unfair Competition, State Unfair Competition Statutes, False Advertising, Antitrust Law.
Week No 10
MONDAY October 27 No 18
17. Non-Word Marks Validity and Distinctiveness, Part 1
Read Grynberg Chapter 4; thus, pp. 66-92.
  • Qualitex v. Jacobson Products (U.S. 1995) (green-gold press pads)
  • Two Pesos v. Taco Cabana (U.S. 1992) (Mexican-food restaurant)
  • various notes and source text (spread throughout)
Note: Please mark passages in cases that would be useful in briefs or argument-bearing letters (e.g., cease-and-desist letters and responses to such letters) arguing over the trademarkability of product configuration. You may find Two Pesos to be less forthcoming in this regard, but in Qualitex you can certainly find passages useful for alleged infringers responding to plaintiffs' (or would-be plaintiffs') claims that reach beyond trademark's core.
TUESDAY October 28 No 19
18. Non-Word Marks Validity and Distinctiveness, Part 2
Read Grynberg Chapter 5 but not the problems; thus, pp. 93-109.
  • Wal-Mart v. Samara (U.S. 2000) (baby clothes)
  • Best Cellars, Inc. v. Wine Made Simple, Inc. (S.D.N.Y. 2003) (wine store)
  • various notes and source text (spread throughout)
Note: Please mark passages in cases that would be useful in briefs or argument-bearing letters. In particular, look in Wal-Mart v. Samara for passages useful for defendants responding to plaintiffs with claims that reach beyond trademark's core, and look in Best Cellars for the opposite.
Week No 11
MONDAY November 3 No 20
18. Non-Word Marks Validity and Distinctiveness, Part 2, continued
Re-review Best Cellars: Prepare a list in response to this question: What lessons can we take from Best Cellars in terms of how to help a client use a trade dress claim to push out of the market, or otherwise avoid competition from, a closely competing business? Put differently, what factors and arguments helped Best Cellars win on inherent disntinctiveness in its lawsuit against the Bacchus store that opened up nearby?
19. Functionality
Read Grynberg pp. 111-135 (stop at and don't include the thermostat problem).
  • TrafFix v. MDI (U.S. 2001) (dual-spring workzone sign)
  • Groeneveld v. Lubecore (6th Cir. 2013) (grease pump)
  • Jay Franco v. Franek (7th Cir. 2010) (circle-shaped beach towel)
  • various notes throughout
Note: Look for and note practical takeaways — passages helpful for letters/briefs, impact-making factors and arguments.
TUESDAY November 4 No 21
20. Aesthetic Functionality
Read Grynberg pp. 137-146.
  • Wallace v. Godinger (2d Cir. 1990) (baroque-style silverware)
  • Christian Louboutin v. Yves Saint Laurent (2d Cir. 2012) (red-outsole shoes)
  • various notes
Note: Look for and note practical takeaways — passages helpful for letters/briefs, impact-making factors and arguments.
Week No 12
MONDAY November 10 No 22
21. Likelihood of Confusion for Trade Dress
Read Grynberg pp. 342-352.
  • Maker's Mark v. Diageo (6th Cir. 2012) (red dripping wax seal)
22. Broadened Theories of Confusion
Read Grynberg pp. 353-354.
Read Grynberg pp. 146-147 plus the first three lines of text on 148 [Note: You're reading this because it's the facts of Au-to Gold common to the aesthetic functionality edit, which we aren't reading, and the broadened confusion edit, which we are].
Read Grynberg pp. 354-358 [this is the Au-to Gold broadened confusion edit.
  • notes on confusion in non-identical markets
  • Au-To Gold v. Volkswagen (9th Cir. 2006) (accessories with car makers' logos and names)
TUESDAY November 11 No 23
22. Broadened Theories of Confusion, continued
Read Grynberg pp. 358-361.
  • Hermes v. Lederer de Paris Fifth Ave (2d Cir. 2000) (purses)
Read Grynberg pp. 368-369.
  • note on post-sale confusion
23. Dilution
Read IPS-M the portion of chapter M-7 on pp. 159-170.
  • Mattel v. MCA Records (9th Cir. 2002) (Barbie Girl song)
Week No 13
MONDAY November 17 No 24
→ Note: There's no reading assigned for today, but as you'll see, it could be useful for you to scan back over the reading from last week for Topics 22 and 23.
22. Broadened Theories of Confusion, continued
We'll have some quick problems on broadened theories of confusion – to make sure we can apply the basic aspects of the doctrine in Au-To Gold v. Volkswagen and Hermes v. Lederer de Paris (i.e., associated-with-the-source confusion, post-sale confusion). Nothing additional to read for this.
23. Dilution, continued
We'll have some quick problems on dilution to make sure we can apply the basic aspects of the doctrine in Lanham Act § 43(c), Mattel v. MCA Records. No additional reading for this.
24. Laches
The reading for this topic is Hermes v. Lederer de Paris, previously assigned for Topic 22, above. Thus, there's no additional reading for this topic.
25. Expressive Uses and the First Amendment
The reading for this topic is Mattel v. MCA Records, previously assigned for Topic 23, above. Thus, there's no additional reading for this topic.
TUESDAY November 18 No 25
26. Fair Use Defense
Read Grynberg, portion over pp. 486-487 plus the first paragraph of KP Permanent Make-Up (i.e., stop after the sentence " We hold it does not."); then read the portion over pp. 492 and then just the first paragraph on 493 (thus, stop at & don't read Packman v. Chicago Tribune); and then read the portion over 506-518.
  • notes and explanations about classic fair use
  • notes and explanations about nominative fair use
  • Toyota v. Tabari (9th Cir. 2010) (auto brokers displaying Lexus marks in selling Lexus cars)
27. First Sale Defense
No reading for this topic.
Week No 14
MONDAY November 24 No 26
29. Internet Domain Names
No reading for this topic.
30. Right of Publicity
Read Grynberg, Chapter 27; thus, pp. 624-645.
  • Notes and explanations re right of publicity
  • Hart v. Electronic Arts (3d Cir. 2013) (football video game)
  • Problems re right of publicity
TUESDAY November 25 No 27
30. Right of Publicity, continued
Read Right of Publicity Nanotreatise
  • Summary of right of publicity law; patterns of successful claims; doctrines employed for unsuccessful claims
Read Polydoros case supplement [pdf]
  • Polydoros v. Twentieth Century Fox (Cal. App. 1997) (character in "The Sandlot")
Week No 15
MONDAY December 1 No 28
31. Secondary Liability for Trademarks
No reading for this topic.
32. Trademark Office Procedural Practice
No reading for this topic.
33. Review / Exam Preparation
Optional, but recommended, read:
Read and prepare a response (either fully written out or in incomplete outline form) to the essay issue-spotter "The Car Washer's Car Washes" Trademarks & Unfair Competition 2024 Final [webpage]. We will go over this in class.
For an entirely optional way to turn in a fully written-out response, please look for an email I'm sending to the class to explain how that will work. But please be aware that actually writing out a full essay response and turning it in is ENTIRELY OPTIONAL and will not count in any manner for your grade.
TUESDAY ("WUESDAY") December 2
Today follows a Wednesday schedule. No Trademarks class.



Topic by Topic:
Initial topics (about the course, overview, IP, trademark policy/theory/context)
1. About the Course
Read over last year's Trademark Analysis Synthesis [PDF] or [DOCX].
Read the Syllabus, including the addendum added 8/31 regarding absence numbers.
2. Orientation to Trademark Law, Policy, Theory and Context
Read IPS-M chapter M-0.
Read Nanotreatise on Copyright Law in the United States.
Read Nanotreatise on Patent Law in the United States.
Read Grynberg Chapter 1, pp. 1-17.
Read IPS-M chapter M-1.
Read Nanotreatise on Right of Publicity Law in the United States.
Skim over Champion Spark Plug Co. v. Sanders, on pp. 32-36 of IPS-M, which was in the reading from last class session. Time ran out, and I'd like to give it a few minutes worth of discussion, which I'll do at the beginning of this class.
Trademark Part I (including core law, practice and theory; word marks)
3. Distinctiveness
Read IPS-M the portion of chapter M-4 on pp. 73-80 (includes Kellogg Co. v. National Biscuit Co. (word mark excerpt)).
Read Grynberg the portion of Chapter 2, pp. 18-32 (includes Zatarains, Inc. v. Oak Grove Smokehouse, Inc.) – read the paragraph on p. 32 labelled "Disclaimers," but then stop.
4. Secondary Meaning; Acquired Distinctiveness
Re-review the portions of Zatarains (pp. 19-29 of Grynberg) discussing secondary meaning.
Read Grynberg the portion of Chapter 2, pp. 32-34 (Start with the paragraph labelled "Secondary meaning." Stop right before the paragraph that begins "Does the mark function as a mark?").
5. Genericness
Read Grynberg pp. 38-46
Read Syllabus of USPTO v. Booking.com (U.S. 2020)
Read Grynberg pp. 55-59, 60 (skip over the note "Geographical Indications")
Read Grynberg pp. 60-64
6. Establishing Rights Through Use
Read Grynberg pp. 175-191
7. Ownership and Priority
Read IPS-M from page M-60 to page M-71
8. Deceptiveness, Geography, Names, and Offensive Word Marks
Read Grynberg pp. 250-260 (start at heading “Deceptive ...” stop at heading “Iancu”)
Read Grynberg pp. 59-60 (note on "Geographical Indications")
9. Trademark Transactions, Goodwill, Licensee Estoppel, and Abandonment
Read Grynberg pp. 223-244
10. Likelihood of Confusion for Word Marks
Read Grynberg pp. 315-331
11. Use-in-Commerce Requirement for Trademark Infringement
Read Grynberg pp. 287-288, 306-314
Various law related to notions of “unfair competition”
12. FTC and Unfair Competition
No reading for this topic. Lecture and slides only.
13. State Unfair Competition Statutes
No reading for this topic. Lecture and slides only.
14. False Advertising
No reading for this topic. Lecture and slides only.
15. Antitrust Law
No reading for this topic. Lecture and slides only.
16. Trade Libel and Defamation
Read Chapters 1 and 2 of Trade Libel and Defamation: An Open Casebooklet - available as PDF or DOCX.
Trademark Part II (including non-word marks, product configuration, product packaging, expanded theories of confusion)
17. Non-Word Marks Validity and Distinctiveness, Part 1
Read Grynberg Chapter 4; thus, pp. 66-92.
Note: Please mark passages in cases that would be useful in briefs or argument-bearing letters (e.g., cease-and-desist letters and responses to such letters) arguing over the trademarkability of product configuration. You may find Two Pesos to be less forthcoming in this regard, but in Qualitex you can certainly find passages useful for alleged infringers responding to plaintiffs' (or would-be plaintiffs') claims that reach beyond trademark's core.
18. Non-Word Marks Validity and Distinctiveness, Part 2
Read Grynberg Chapter 5 but not the problems; thus, pp. 93-109.
Note: Please mark passages in cases that would be useful in briefs or argument-bearing letters. In particular, look in Wal-Mart v. Samara for passages useful for defendants responding to plaintiffs with claims that reach beyond trademark's core, and look in Best Cellars for the opposite.
Re-review Best Cellars: Prepare a list in response to this question: What lessons can we take from Best Cellars in terms of how to help a client use a trade dress claim to push out of the market, or otherwise avoid competition from, a closely competing business? Put differently, what factors and arguments helped Best Cellars win on inherent disntinctiveness in its lawsuit against the Bacchus store that opened up nearby?
19. Functionality
Read Grynberg pp. 111-135 (stop at and don't include the thermostat problem).
Note: Look for and note practical takeaways — passages helpful for letters/briefs, impact-making factors and arguments.
20. Aesthetic Functionality
Read Grynberg pp. 137-146.
Note: Look for and note practical takeaways — passages helpful for letters/briefs, impact-making factors and arguments.
21. Likelihood of Confusion for Trade Dress
Read Grynberg pp. 342-352.
22. Broadened Theories of Confusion
Read Grynberg pp. 353-354.
Read Grynberg pp. 146-147 plus the first three lines of text on 148 [Note: You're reading this because it's the facts of Au-to Gold common to the aesthetic functionality edit, which we aren't reading, and the broadened confusion edit, which we are].
Read Grynberg pp. 354-358 [this is the Au-to Gold broadened confusion edit.
Read Grynberg pp. 358-361.
Read Grynberg pp. 368-369.
23. Dilution
Read IPS-M the portion of chapter M-7 on pp. 159-170.
24. Laches
The reading for this topic is Hermes v. Lederer de Paris, previously assigned for Topic 22, above. Thus, there's no additional reading for this topic.
25. Expressive Uses and the First Amendment
The reading for this topic is Mattel v. MCA Records, previously assigned for Topic 23, above. Thus, there's no additional reading for this topic.
26. Fair Use Defense
Read Grynberg, portion over pp. 486-487 plus the first paragraph of KP Permanent Make-Up (i.e., stop after the sentence " We hold it does not."); then read the portion over pp. 492 and then just the first paragraph on 493 (thus, stop at & don't read Packman v. Chicago Tribune); and then read the portion over 506-518.
27. First Sale Defense
No reading for this topic.
28. Secondary Liability in Trademark
No reading for this topic.
Other law re protecting indications of identity (domain names, right of publicity)
29. Internet Domain Names
No reading for this topic.
30. Right of Publicity
Read Grynberg, Chapter 27; thus, pp. 624-645.
Read Right of Publicity Nanotreatise
Read Polydoros case supplement [pdf]
31. Secondary Liability for Trademarks
No reading for this topic.
32. Trademark Office Procedural Practice
No reading for this topic.
33. Review / Exam Preparation
Optional, but recommended, read:
Read and prepare a response (either fully written out or in incomplete outline form) to the essay issue-spotter "The Car Washer's Car Washes" Trademarks & Unfair Competition 2024 Final [webpage]. We will go over this in class.
For an entirely optional way to turn in a fully written-out response, please look for an email I'm sending to the class to explain how that will work. But please be aware that actually writing out a full essay response and turning it in is ENTIRELY OPTIONAL and will not count in any manner for your grade.




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