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Gilson on Trademarks

The standard for trademark law practice.
Publisher: Matthew Bender
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ISBN: 9781422486207
Publisher: Matthew Bender
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Book Edition: 97

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The standard for trademark law practice.

Gilson on Trademarks, the definitive trademark law treatise, features:

• Comprehensive and current treatment of trademark law in the United States, with clear explanations of basic principles and expert discussion of complex issues
• Detailed analysis of infringement, trade dress, right of publicity, false advertising, counterfeiting, dilution and trademark law remedies with extensive case citation
• Full coverage of domain name registration and protection under U.S. law and the UDRP
• More than 450 trademark practice forms on all aspects of USPTO proceedings, complete with drafting guides, practice tips and filing requirements
• Practice forms and drafting guides for federal and state trademark litigation, assignments, licenses, recordal with Customs and domain name challenges
• Four volumes of legislative history of the Lanham Act, organized by section
• Reprint of USPTO's Trademark Manual of Examining Procedure (TMEP)
• USPTO's Acceptable Identification of Goods and Services Manual (ID Manual) available electronically on ebook.
• USPTO's Trademark Trial and Appeal Board Manual of Procedure (TBMP) available electronically on ebook.

The TMEP, ID Manual and TBMP are available separately. TBMP and The Acceptable Identification of Goods and Services Manual are available only electronically. TMEP is available in print or electronic form.

The treatise is updated 3 times per year.

The eBook version of this title features links to Lexis Advance for further legal research options.

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Table of Contents


Chapter 1 General Principles

Chapter 2 Trademark Subject Matter

Chapter 2A Trade Dress Protection

Chapter 2B The Right of Publicity

Chapter 3 Establishing Trademark Rights

Chapter 4 Federal Trademark Registrations


Chapter 5 Likelihood of Confusion

Chapter 5A Dilution

Chapter 6 Trademark Licensing

Chapter 7 Federal Unfair Competition Law

Chapter 7A Trademark Law and the Internet


Chapter 8 Trademark Infringement Litigation

Chapter 9 Trademark Inter Partes Litigation

Chapter 10 Foreign Trademark Protection

Chapter 10A The Community Trade Mark

Chapter 11 Jurisdiction, Claims and Defenses

Chapters 12-13 [Reserved]

Chapter 14 Remedies


Chapter 15 The U.S. Patent and Trademark Office: Filing and Other Procedures

Chapter 16 Section 1 or 44 Applications for Registration on the Principal Register Based on Actual


Chapter 17 Applications for Registration on the Principal Register Based on Intent-to-

Use a Trademark

Chapter 18 Intent-to-Use Follow-Up Forms

Chapter 19 Section 44 Applications Based on Foreign Registrations

and Priority Claims Under Section 44(d) Based on Foreign


Chapter 19A International Applications Based on the Madrid Protocol Originating in the United States

Chapter 20 Applications for Registration on the Supplemental Register

Chapter 21 Declaration and Verification Forms for Applications, Amendments to

Allege Use and Statements of Use

Chapter 22 Application Drawing Pages

Chapter 23 Specimens of Use


Chapter 24 Representation Forms: Appointment of Power of Attorney; Revocation,

Substitution and Withdrawal of Attorney; and Designation of

Domestic Representative Forms

Chapter 25 Trademark Application Prosecution Forms

Chapter 26 Inter Partes Proceeding Forms

Chapter 27 Post-Registration Forms

Chapter 28 Trademark Assignments, Licenses, Security Agreements and Recordal


Chapter 29 Recording Registered Trademarks and Trade Names with the United

States Bureau of Customs and Border Protection and Reporting Criminal Trademark Violations

Chapter 30 Internet Domain Name Information and Registration and Challenge Forms

Chapter 31 Federal Trademark Prelitigation and Litigation Forms

Chapters 32-35 [Reserved]

Chapter 36 State Trademark Registration Forms

Chapter 37 Community Trade Mark and Design Forms

Index Of Forms


Appendix 1 The Lanham Act, as amended

Appendix 2 Selected Sections in Title 35 of the United States Code Relating to


Appendix 3 The United States International Trade Commission

Appendix 4 Alphabetical Listing of Federal Statutes Protecting Names, Characters

and Designs

Appendix 5 P.T.O.'s Trademark Rules of Practice (Title 37, Code of Federal


Appendix 6 Customs Regulations Relating to Trademarks (19 C.F.R. Part 133)

Appendix 7 International Trade Commission Adjucative Rules (19 C.F.R. Part 210)

Appendix 8 Uniform Deceptive Trade Practices Act

Appendix 9 P.T.O. Trademark Application Guides for Examining Attorneys

Appendix 10 Dictionaries and Other Lexical Sources

Appendix 11 Paris Convention for the Protection of Industrial Property

Appendix 12 Trademark Law Treaty and Regulations

Appendix 13 Madrid Protocol

Table Of Cases

Chapter Index


Part I Introduction

Part II Chronology of Events in Legislative History of the Lanham

Trademark Act of 1946 and Subsequent Amendments

Part III Lanham Act, as amended, Section by Section Legislative History

[Sections 1 through 14]


Part III Lanham Act, as amended, Section by Section Legislative History

(Continued) [Sections 14-34]


Part III Lanham Act, as amended, Section by Section Legislative History

(Continued) [Sections 34-51]

Part IV Bills and Reports


Part V Prior Trademark Acts

Part VI Legislative History of Trademark Law Revision Act of 1988

Part VII Comparative Print of the Lanham Act as amended by the

Trademark Law Revision Act of 1988

Part VIII Trademark Registration Treaty - Implementing Legislation

Part IX Uniform Deceptive Trade Practices Act