Trademark Law Writing Assignments – Fall 2021

TRADEMARK LAW WRITING ASSIGNMENTS – FALL 2021


BASIC REQUIREMENTS AND MECHANICS

The graded work for this course consists of three short (3-4 pp.) writing assignments. These may consist of legal memoranda (to colleagues, clients, or others); explanatory email messages (again, to one or more audiences); or PowerPoint [or equivalent] slide decks (in which the lawyer communicates by the content of the slide deck, not by delivering a presentation orally).

Each assignment will be posted here approximately two weeks before the assignment is due. Also before the assignment is due, time in class will be set aside to discuss questions relating to each assignment.

FORMAT EXPECTATIONS

Most prior versions of this course have required that writing assignments be produced in solely in the format of traditional legal memos. That expectation has changed, because lawyers today increasingly communicate in other formats and other media. The Fall 2021 version of the course may require different formats.

HOW TO SUCCEED

Although the formats may change, professional expectations regarding effective communication have not changed. Legal writing and communication in every setting should be clear, consistent, polished, expert, ethical, responsive, and trustworthy. Those expectations apply to this course.

For guidance regarding those expectations and how they apply to the graded work for this course, students are strongly encouraged to read and re-read this “Modern Legal Writing” document, which summarizes advice for producing great work product in Professor Madison’s courses.

That document also explains in great detail how the work is graded.

RUBRIC

The rubric used to mark the assignments is available here. That document explains in broad outline how the work is graded.

WRITING ASSIGNMENT DUE DATES

The due dates for the required writing assignments are listed at the Course Homepage / Reading and Class Assignments as part of the list of assignments and readings.

For clarity, the dates are:

  • Assignment 1:  Friday, October 8, 2021, at 3 pm.
  • Assignment 2:  Friday, November 12, 2021, at 3 pm.
  • Assignment 3:  Last day of exams (December 9, 2021), at 12 noon.

SAMPLE QUESTIONS

For students who want to know more about the assignments for this course, here is a page containing the text of some prior assignments.

ASSIGNMENTS

Assignment Three

To: Junior associate, Dewey, Cheatem, and Howe
From: Junior partner, Dewey, Cheatem, and Howe
Date: November 15, 2021
Re: Trademark playbook for online platforms

I’ve been watching recent trademark litigation against Redbubble (redbubble.com), which as you know produces and sells merchandise that incorporates user-created or user-supplied art.  In recent cases, Redbubble was sued by Ohio State University (Redbubble won in the trial court on summary judgment, but that got reversed on appeal); Brandy Melville (Redbubble lost in a jury trial but got the damages award substantially reduced on a post-trial motion); and Atari (Redbubble won at trial).

Our firm has several clients that operate online platforms that allow users to upload artworks.

It seems to me that we should prepare a quick and useful guide to trademark law and business strategy, both for our clients and for our own use, in understanding and anticipating how to deal with trademark risks in those online settings.

For example, in the recent Atari v. Redbubble case, it was reported during the trial that Redbubble’s in-house counsel testified that the company maintains an automated system for checking content uploaded by users; that the system relies on a big database of keywords; and that the company also has human beings performing manual review of uploaded images.  He also apparently testified that the company tries to respond productively to complaints from trademark owners (there’s a complaint form that Redbubble makes available) but doesn’t pre-emptively take content down, because some IP owners like the publicity or at least have different brand strategies.

The result is good for Redbubble, but it seems to me that the company is walking a law-and-business tightrope, figuring out its business strategy while spending a lot of expensive time in court. Maybe Redbubble has the resources and fortitude to do that, but many of our clients don’t – particularly smaller clients with niche businesses, and clients that want to stay out of the courtroom and the limelight. It seems to me that we shouldn’t tell our clients that their businesses have to go to jury trials before they know whether they’re safe. Some clients may be willing to live life a bit more on the edge; some won’t.  Between these recent events and the underlying law, can we put together something proactive?  Some kind of a how-to guide for understanding and making decisions about the trademark risks and opportunities associated with running a platform business in today’s world?

What I have in mind is a kind of playbook. I don’t have a specific sense of what the playbook should look like or what it would say, so I want you to be imaginative. Expect that what you come up with will be part of what we share with clients. What would be accurate? What would be useful? What would take into account not only legal rules but the practicalities of running a business and using (or not using) tech and human beings as resources?

Rules and Guidelines for Assignment Three

To the extent that these rules may appear to conflict with general advice regarding work product that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your work product. Write the names of any of these “consultants” at the top of the first page of the document.

Use your own name in the “From” field. Your work product is not anonymous.

Format

Your work product in response to this assignment should be formatted in one of two ways: (i) as an email rather than as a default or standard “legal research memo.” Your email should consist of not more than 1,200 words, excluding the header (To, From, Subject line, Date). In printed form, it should have 1″ minimum margins on all sides. OR (ii) as a set of PowerPoint slides, prepared for delivery as a printed work product, rather than as a guide or accompaniment to an oral presentation. Including a title slide, the total PowerPoint “slide deck” should consist of no more than 25 slides. [For guidance and suggestions regarding how to prepare professional PowerPoint slides, review these examples.]

You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. A factual summary may be helpful, however, in framing and presenting your analysis. No footnotes are permitted.

You may use any font that you wish, but of course take care that all aspects of your work product should look, as well as be, professional.

So that your work product can be uploaded to the TWEN system in Westlaw (see below) and graded electronically, you must use Microsoft WORD (in the case of option (i)) or Microsoft PowerPoint (in the case of option (ii)).

Grading

Work product will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that your work should identify, analyze, and solve in a creative way.

Due date

One copy of the work product prepared for this assignment must be turned in not later than Thursday, December 9, 2021, at 12 noon.

Your work product must be turned in via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment Three for this course. Although the work product may be formatted as an email or as an electronic PowerPoint file, electronic (e-mailed) copies are not acceptable. Documents slipped under anyone’s door are not acceptable.

There were be no extensions or exceptions to the deadline. Work product that does not conform to the format instructions above, or that is turned in late, will be accepted, but is subject to grade reduction.

Assignment Two

[The fact pattern below refers to a real world problem. You are welcome to look for real world information to help you understand it and analyze it. But be cautioned: the problem calls for analysis, and analysis by you, not for a report on what you find by searching online or elsewhere.]

To: Junior trademark lawyer, Dewey, Cheatem, and Howe
From: Senior relationship partner, Dewey, Cheatem, and Howe
Date: October 29, 2021
Re: Cleveland baseball trademark matter

As you know, this firm has represented Cleveland’s franchise in Major League Baseball for many years.

As you also know, the Cleveland team announced in July that it intended to change the team’s name from “Indians” to “Guardians,” taking inspiration from notable aspects of Cleveland history.

When the announcement was made, a modest controversy emerged over the fact that a Cleveland roller derby team is nicknamed the “Guardians” and owns and uses the domain name clevelandguardians.com. My understanding is that the baseball team took steps to register “Cleveland Guardians” with the US Patent and Trademark Office and also to negotiate with the roller derby folks to head off a possible lawsuit.

I don’t know any of the details. The steps toward registration and the negotiations have both been handled within the baseball organization, not by our firm. It looks to me like the negotiations must have broken down, because the other day the roller derby team sued our client in federal court, for trademark infringement. Some of the conversations and steps in question are included in the allegations of the Complaint.

You can see the Complaint here.

For the time being, the gloves (or the baseball mitts) are off. The client needs a quick analysis of the strengths and weaknesses of their legal position relative to the claims in this lawsuit. That’s my request to you. Where does the case look good for the client right now, where does it look weak; where and how should we make the strong case stronger and where and how should we try to bolster the weaknesses?

There are 3 “Counts” in the case. You should focus entirely on the allegations in the first “Count,” which is pled under federal trademark law. The second and third are pled under state law, and in this case, for now, we should assume that they largely track the federal “Count.”

It’s always possible that the negotiations will resume and that the case will settle, but a solid assessment of the litigation case will help the client understand where it has a stronger negotiating position and where it has a weaker one. The baseball team could always simply buy out the roller derby team, but the details may matter a lot – price and otherwise – and the team may decide that it’s better to simply win the case outright rather than pay whatever the roller derby team might demand. But the team can’t make that judgment until it learns more about its litigation prospects and related tactics.

Rules and Guidelines for Assignment Two

To the extent that these rules may appear to conflict with general advice regarding work product that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your work product. Write the names of any of these “consultants” at the top of the first page of the document.

Use your own name in the “From” field. Your work product is not anonymous.

Format

Your work product in response to this assignment should be formatted as an email rather than as a default or standard “legal research memo.” It must be typed or printed using a computer. Your email should consist of not more than 1,200 words, excluding the header (To, From, Subject line, Date) and information about humans you consulted. In printed form, it should have 1″ minimum margins on all sides.

You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. Including a factual summary may be helpful, however, in framing and presenting the analysis of the memo. No footnotes are permitted. The following font must be used: Twelve [12] point Times New Roman.

So that your email can be uploaded to the TWEN system in Westlaw (see below) and graded electronically, you must use Microsoft WORD.

Grading

Work product will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues and/or problems that the work product should identify, analyze, and solve in a creative way.

Due date

One copy of the work product prepared for this assignment must be turned in not later than Friday, November 12, 2021, at 3 p.m.

Your work must be turned in via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment Two for this course.

There were be no extensions or exceptions to the November 12 deadline. Work product that does not conform to the format instructions above, or that is turned in late, will be accepted, but it will be subject to grade reductions.

Assignment One

[The fact pattern below refers to a real world entertainment but to an imaginary trademark practice question. Energetic researchers will learn quickly that the real world Warner Bros. has applied to register a number of Ted Lasso-related marks. Note that the assignment calls for analysis and problem identification and solving rather than a report on real world events.]

To: Junior trademark lawyer, Dewey, Cheatem, and Howe
From: Senior relationship partner, Dewey, Cheatem, and Howe
Date: September 24, 2021
Re: Ted Lasso trademark matters

Our client Warner Bros. produces Ted Lasso, which as I’m sure you know, is an unexpectedly successful hit on streaming, via Apple.

Ted Lasso-themed merchandise is already available not only via the authorized Warner Bros. online store but also via Etsy and other unauthorized online sites.  To secure Warner Bros. trademark rights and maximize its power to deal with unauthorized merchandise, the client wants us to explore registering relevant trademarks in connection with merchandise that appears on the show and/or that is sold to fans of the show. 

For now, we’ve been asked to look into the potential registrability of the following marks.  I need you to briefly explain potential roadblocks and speed bumps in the registration process, so that I can brief the client.

“AFC Richmond”

(In Ted Lasso, AFC Richmond is the name of the fictional soccer club that hires Ted Lasso and is the setting for most of the show.  Richmond is a real location in England.  “AFC” is a common acronym in English soccer; it stands for “Athletic Football Club.”)

“Greyhounds.” 

(A greyhound is the mascot of the fictional AFC Richmond.  As I understand the show, the name of the team is not the “Richmond Greyhounds” or “AFC Richmond Greyhounds.”  But, as with many organized soccer clubs in the UK (both professional and semi-professional), in the show the club and its supporters collectively have adopted and refer to a mascot.  For Richmond, that’s the greyhound.)

This logo:

(In the show, this logo – a “badge,” in soccer terms – appears on the team’s uniforms, training outfits, and on graphics associated with the team: websites, social media, printed matter, and so on.)

I need your summary, 4 pages maximum, no later than 3 pm on Friday, October 8, 2021.

Rules and Guidelines for Assignment One

To the extent that these rules may appear to conflict with general advice regarding work product that appears in course-related webpages, these rules take precedence.

This is an “open” problem, meaning that there are no limits on the resources that you may bring to bear on your work. Among other things, you may consult with your classmates and other human beings. If you discuss the merits of the assignment with anyone, however, you must disclose that person’s identity on or in your work product. Write the names of any of these “consultants” at the top of the first page of the document.

Use your own name in the “From” field. Your work product is not anonymous.

Format

You should use the default or standard “legal research memo” form and format for this assignment. For the content, be guided by the advice in the “Modern Legal Writing” document cited above.

Memos must be typed or printed using a computer. Each memo, including any attachments, must be not longer than four [4] typewritten or printed pages, double-spaced, with 1″ minimum margins on all sides. “To,” “From,” “Re,” and “Date” headings may be single spaced, and the “consultants” list may appear inside the 1″ margin at the top of the first page.

You do not need to include a comprehensive statement of the facts; instead, you may refer to the factual background in my memo to you. Omitting a factual summary may be unwise nevertheless. A factual summary may be helpful in framing and presenting the analysis of the memo.

No footnotes are permitted.

The following font must be used: Twelve [12] point Times New Roman.

So that the memos can be uploaded to the TWEN system in Westlaw (see below) and graded electronically, you must use Microsoft WORD for the final, submitted version of the memo.

Grading

Work product will be graded based on form, format, and writing quality as well as on content. The assignments are designed so as not to have any single correct or even best solution. Each problem may present a range of issues that your work should identify, analyze, and solve in a creative way.

Due date

One copy of the work product prepared for this assignment must be turned in not later than Friday, October 8, 2021, at 3 pm.

Your work product must be turned in via the course TWEN page (on Westlaw), by depositing an electronic copy in the TWEN “Drop Box” for Assignment One for this course. Electronic (e-mailed) copies are not acceptable. Documents slipped under anyone’s door are not acceptable.

There were be no extensions or exceptions to the deadline. Work product that does not conform to the format instructions above, or that is turned in late, will be accepted but is subject to grade reduction.