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Lexis Nexis Gilson on Trademarks
Gilson on Trademarks is the leading trademark treatise with expert analysis and drafting guides. Gilson includes USPTO examination and identification manuals.
Publisher: Matthew Bender Elite Products
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The standard for trademark law practice.
Gilson on Trademarks, the definitive trademark 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) available electronically on Lexis Advance or in eBook
• USPTO's Acceptable Identification of Goods and Services Manual (ID Manual) available electronically on Lexis Advance or in eBook
• USPTO's Trademark Trial and Appeal Board Manual of Procedure (TBMP) available electronically on Lexis Advance or in eBook
The TMEP, ID Manual and TBMP are available separately via electronic download.
The treatise is updated 3 times per year.
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Authors / Contributors
Jerome Gilson
Anne Gilson LaLonde
Anne Gilson LaLonde
Anne Gilson LaLonde is the author of Gilson on Trademarks. She has worked on the treatise in various capacities since 1999 and took over full authorship from her father, Jerome Gilson, in 2006.
Anne has written numerous articles on a variety of trademark-related issues, including several co-written with her father, four of which won Burton Awards for Legal Achievement. Ten of her articles have been published in the International Trademark Association’s Trademark Reporter. Her article topics include the irreparable harm presumption, the role of intent in likelihood of confusion, scandalous trademarks, nontraditional trademarks, deceptive trademarks, the supplemental register, cybersquatting and fan-created content. She often speaks on trademark-related topics.
Anne served on the Trademark Public Advisory Committee of the U.S. Patent and Trademark Office from 2018 to 2020 and is currently Chair of the U.S. Subcommittee of INTA’s Legislation and Regulation Committee. In 2020, Anne received the INTA Service Award for the Advancement of Association Objectives.
After graduating cum laude from Princeton University with a degree in philosophy, Anne graduated cum laude from the University of Michigan Law School, serving as Book Review Editor of the Michigan Law Review. She practiced at Sidley & Austin in Washington, D.C. in the firm's Litigation Practice Group before her judicial clerkship in the United States District Court for the District of Columbia.
Anne is an inactive member of the Illinois and District of Columbia bars. She lives in Vermont with her family. Drop her a line at trademarkbook@comcast.net.
Table of Contents
PART I. Analysis
CHAPTER 1 General Principles
APPENDIX 1A Model State Trademark Bill
CHAPTER 2 Distinctiveness and Trademark Subject Matter
CHAPTER 2A Trade Dress Protection
CHAPTER 2B The Right of Publicity
CHAPTER 3 Selecting a Trademark, Establishing Rights and Obtaining Registration
CHAPTER 4 Federal Trademark Registrations
CHAPTER 5 Likelihood of Confusion and Counterfeiting
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 European Union Trade Mark
CHAPTER 11 Standing and Jurisdiction
CHAPTER 12 Claims
CHAPTER 13 Defenses
PART II. Forms and Drafting Guides
CHAPTER 14 Remedies
CHAPTER 15 The U.S. Patent and Trademark Office: Filing and Other Procedures
CHAPTER 16 Section 1 or 44 (15 U.S.C. §§ 1051, 1126) Applications for Registration on the Principal Register Based on Use
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 (15 U.S.C. § 1126) Applications Based on Foreign Registrations and Priority Claims Under Section 44(d) Based on Foreign Applications
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 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 Proceedings Forms
CHAPTER 27 Post-Registration Forms
CHAPTER 28 Trademark Assignments, Licenses, Security Agreements and Recordal Forms
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 Domain Name Registration and Challenge Forms
CHAPTER 31 Federal Trademark Prelitigation and Litigation Forms
CHAPTER 32 State Trademark Registration Forms
CHAPTER 33 European Union Trade Mark and Registered Community Design Forms
CHAPTER 34 RESERVED
CHAPTER 35 RESERVED
CHAPTER 36 RESERVED
PART III. Primary Source Appendices
APPENDIX 1 The Lanham Act
APPENDIX 2 Selected Sections in Title 35 of the United States Code Relating to Trademarks and the Patent and Trademark Office
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 Regulations)
APPENDIX 6 Customs Regulations Relating to Trademarks
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 Examination Guides for Examining Attorneys
APPENDIX 10 Dictionaries and Other Lexical Sources
APPENDIX 11 Paris Convention for the Protection of Industrial Property of March 20, 1883,
APPENDIX 12 Trademark Law Treaty and Regulations (as adopted by the Diplomatic Conference on October 27, 1994)
APPENDIX 13 Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks
USPTO Acceptable Identification of Goods and Services Manual
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP)
Trademark Trial and Appeal Board Manual of Procedure (TBMP)
