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UA School of Law revamps trademark clinic
SHERRY KARABIN
Legal News Reporter
Published: November 23, 2016
Author and voice actor Heather Dugan knows firsthand what it’s like to become embroiled in a trademark battle.
Not long ago, she found herself in a legal dispute with a dating service in Orange County, California over the title of her first book, “Date Like a Grownup: Anecdotes, Admissions of Guilt & Advice Between Friends,” which was published in 2014. The service went by the name, “Date Like a Grownup.”
When the problem began, she said the book had already come out. “I’d done several speaking events and committed to a few radio and TV interviews and my first Barnes & Noble event,” said Dugan, who lives in Columbus.
“I was afraid to say the name of the book publicly, at book signings and in radio and TV interviews,” said Dugan. “I spent a week learning how to write my own legal brief and luckily the case was resolved in my favor.”
Dugan said she didn’t want to make the same mistake with her second book, “Finding Your Cabernet Coaches: Building Face-to-Face Friendships in a Virtual World.”
To avoid any potential trademark issues, she went on the United States Patent and Trademark Office (USPTO) website and checked to see if anyone had trademarked the term yet.
“Cabernet Coaches is also the name of a social group that I started so I decided I had better be proactive,” said Dugan.
“Intellectual property attorneys are pretty expensive, but I noticed that the USPTO certifies law schools to act as legal clinics and shopped ‘local.’ The University of Akron was the only Ohio school listed.”
She contacted Akron Law’s trademark clinic, which began assisting her in June.
“They were very responsive,” said Dugan. “The clinic filed for trademark protection of the distinctive phrase ‘Cabernet Coaches,’ which covers the group and the title on my eventual book cover.”
Dugan is now awaiting a response.
Begun in 2011, the clinic is one of a handful throughout the country that has been specially designated by the USPTO to allow law students to prosecute trademark applications. Akron Law students handle client interviews, conduct trademark searches, draft opinion letters and prepare trademark applications that are reviewed and submitted by adjunct professor Dan Thomson, a U.S. patent attorney and a partner at Emerson Thomson Bennett.
Recently Thomson revamped the clinic to sharpen the focus on trademark prosecution.
“Previously the clinic handled general intellectual property matters and we assisted clients around the country,” said Thomson, who runs the clinic. “We prepared trademark applications but we did not file them.
“The idea to change the clinic came in 2015,” said Thomson, who officially took over in January.
“I was asked to step in because they wanted someone who could file trademark applications. To do so, the attorney needs to be a licensed trademark attorney with five years of experience.”
Thomson said the clinic now works with entrepreneurs and companies located in Ohio that have been in business for five years or less and make no more than $100,000 in annual revenue or income.
Clients pay a fee for the application, but the legal services are free.
“We handle most of our requests via email, but we will meet with a client in person during our clinic hours,” said Thomson.
While Dugan learned about the clinic through the USPTO, about half the referrals come from Akron Law’s Small Entrepreneur and Economic Development (SEED) clinic.
Ryan Vacca, interim co-dean at The University of Akron School of Law, said the clinic not only helps entrepreneurs to avoid legal problems it also gives students a chance to get some on-the-job experience.
“Most of the students in the clinic are interested in intellectual property work,” said Vacca. “Handling trademark prosecution is bread and butter work for most IP attorneys. Many choose to focus exclusively on trademark prosecution.
“The clinic gives students a chance to see these applications through to the end,” said Vacca. “Because of our arrangement with the USPTO, the office responds to us quickly since they know the students are here for one semester. Being able to tell a prospective employer that they have seen an application through from start to finish gives students a leg up during job interviews.”
Akron Law student Douglas Moseley is taking the clinic for the second time.
A native of Seattle, Washington, Moseley received his bachelor’s degree in physics from The Ohio State University and has a master’s degree in mechanical engineering from The University of Akron.
Until March, he served as vice president of research and technology at Meggitt Aircraft Braking Systems in Akron, where he was managing the company’s IP. He said the company offered early retirement and he decided it was the right time to change careers and finish his legal studies.
Moseley, who graduates in December, is now a law clerk at the IP firm Eschweiler & Associates.
“I took the trademark clinic the first time in the spring of 2016 when Dan Thomson had just taken over,” said Moseley. “We had a limited number of clients at that point but I really enjoyed the practical experience and decided to take the clinic again this fall. We now have a strong backlog of clients and a good number of applications in process.”
He said he’s already putting his knowledge of trademark applications to work as a legal clerk. “I drafted a trademark application for one of our commercial clients. It’s in prosecution right now and I expect to hear back in three to six months.
“The clinical experience is a wonderful complement to the academics of law school. It gives you the opportunity to relate what you learned in the classroom to real world applications in service of real clients and their needs,” said Moseley. “It’s a great feeling when that light bulb goes off.”
Akron Law night student Michelle Fabry is taking the course for the first time. She said the intellectual property program, including the trademark clinic, was one of the main reasons she chose Akron Law.
A registered patent agent who works full time at Renner Kenner, Fabry said the clinic has given her in-depth knowledge about the prosecution process.
“I learned how to file a trademark application, how to respond to an application that has been rejected and how to advise clients,” said Fabry, who graduates in December. “For a school to offer this type of experience and give you credit is very unusual. I don’t think a lot of places do that.
“I am very interested in trademark work and I think the practical experience I am getting will help a great deal.”
Part-time night student Julia Radefeld said the clinic reaffirmed her interest in IP law.
Born in Dayton, she received her bachelor’s degree in materials science engineering from Case Western Reserve University.
“I have been working as an engineer for about five years,” said Radefeld, who currently serves as an application development engineer at TimkenSteel. “A couple of years ago I realized I wanted to go into law after working with an in-house attorney on a patent.
“The clinic has allowed me to work with clients, which I would not otherwise have the chance to do since I work full time,” said Radefeld, who plans to graduate in August 2017 with a certificate in IP. “I feel more practice ready.”