This page collects and reproduces writing assignments in Professor Michael Madison’s courses in Trademark Law between 2020 and 2013.
FALL 2021
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?
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.
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.
FALL 2020
Assignment Three
(The facts, characters, and actors in the following problem are entirely hypothetical. Do not assume or infer any relationship between the problem described here and anything that may have happened, or that is happening, in the real world.)
To: Junior Lawyer, GA Law, LLP
From: Senior Lawyer, GA Law, LLP
Date: November 13, 2020
Re: Unknown America matter
Our client, Eon Productions, has retained the firm to advise it in the following trademark matter. I’d like you to review the facts as we know them, look into the relevant law, and outline a strategy for proceeding, noting relevant strengths and weaknesses that I can discuss with the client.
Here’s what I understand to be the facts, so far:
Eon produced a highly successful television series titled “Unknown America,” which appeared for 10 years on US public television stations, between 1992 and 2002. The format of the show featured a host, Devin McCloud, touring the US and visiting out of the way locations, attractions, and areas of modest but telegenic historic interest. In 1995, Eon obtained a federal trademark registration for the title “Unknown America.” That registration is still in effect today. “Unknown America” episodes are still available for streaming on various platforms.
In 2006, the Columbus Network, a cable television producer and distributor, approached Eon and asked for permission to title an upcoming TV series “Unknown Americas” or “Unknown Americana.” Eon declined. Columbus ended up making a series, which featured a host visiting unusual attractions and sites around the US, and distributed it in 2010 in the US under the title “Hidden America” and outside the US under the title “Unknown America.” Eon says that it was not aware of what Columbus had done, and instead continued with occasional negotiations with Columbus regarding Columbus possibly acquiring rights to and distributing the pre-existing episodes of the Eon “Unknown America” library, or using Unknown America footage as part of a new series. Those negotiations never led to a deal.
Between 2014 and 2019, Columbus produced additional TV series and documentaries, all with related content, that used different but related titles: “Exploring America’s Unknowns,” “Surviving America’s Unknowns,” and “Inside Unknown America.” Those series are available on various streaming services and can be purchased as DVD collections from the Columbus website.
I know enough about trademark and copyright law to know that our strongest case here will focus on trademark law and will focus on the obvious similarities between Eon’s registered mark and the titles of Columbus’s shows. So you should focus on those as well.
I also know that in recent years, courts have gotten sensitive to free speech arguments by defendants in cases involving movies and songs and the like, using the Rogers case. We’ll need to strategize our client’s case in a way that minimizes the effect of Rogers, to the extent that’s possible.
I’ve already told the client that if we file a suit, we’ll look to file it in the federal district for New Ken, which is part of the Fourteenth Circuit. The Fourteenth Circuit has never decided a case involving a Rogers defense, so we’ll have the opportunity, I hope, to argue that Rogers isn’t the law. But my guess is that we’ll lose that argument, so we’ll need to be in a good position to argue that Rogers should be applied narrowly.
Here’s my question for you:
Take a look at the most recent cases applying Rogers, especially the Honey Badger case. Given where the law stands today, what’s Eon’s best strategy for getting the court to adopt a narrow reading of Rogers and so getting our client’s case past Rogers? We need to plead the case effectively, to get past a motion to dismiss based on Rogers, and we need to figure out what facts are most likely to matter in our favor, to get past a later motion for summary judgment, also based on Rogers. If that’s not likely to be successful (if we’re likely to lose either motion based on Rogers), I’d like to know why. If there are aspects of the factual record that we need to develop beyond what I’ve summarized above, it would be helpful to know what those are.
I need your work by December 9.
Assignment Two
To: Junior Lawyer, GA Law, LLP
From: Senior Lawyer, GA Law, LLP
Date: October 28, 2020
Re: The Beckham brand
Our clients are David Beckham, the internationally famous footballer and style icon, and Victoria Beckham, his wife, a successful fashion designer and icon in her own right and a musician once known as “Posh” Spice.
As you probably know, the BECKHAM trademark is widely known worldwide in connection with a variety of elite branded products and services, most of which are in athletics and in the fashion, beauty, skincare, and grooming industries. Their commercial enterprises are documented at two websites: davidbeckham.com and victoriabeckham.com.
They have made me aware of some websites and product offerings that they have not authorized but that cause them concern. Our firm has been asked to review them and recommend a strategy or strategies for classifying the character of relevant trademark/brand problems, if any, and remedying them as appropriate. The Beckhams are shrewd businesspeople, and they do not want to waste their time or money on unnecessary matters.
The sources of concern are these:
A website at beckham.com.
A line of bedding (linens and pillows) being sold as BECKHAM Luxury Linens and the Beckham Hotel Collection (https://beckhamluxury.com/). The products are being sold both via that website and via third parties, such as Amazon.
In our routine monitoring of the US Trademark Office Official Gazette, we noticed recently that a “Beckham Hotel Collection” mark had been published for opposition, and as a precaution and in order to reserve the client’s rights we filed a Notice of Opposition. Of course we can always withdraw that filing or not pursue it.
I need an overview of the situation that I can share with the client, in no more than 1,200 words. What are the key points to address? What are the strengths and weaknesses of the clients’ positions? If we need to do research, what research do we need to pursue, and why? Be imaginative but focused in framing your inquiries and your results.
Assignment One
To: Junior Lawyer, GA Law, LLP
From: Senior Lawyer, GA Law, LLP
Date: September 24, 2020
Re: Duke Caboom / Evel Knievel lawsuit
Our client The Walt Disney Co. has retained us to do some preliminary review of a new lawsuit filed in connection with the recent Pixar film, Toy Story 4.
The complaint is available here.
Briefly, the plaintiff claims to own various IP rights associated with Evel Knievel, a motorcycle stuntman who achieved a certain level of celebrity during the 1970s by jumping his motorcycle over theatrically arranged things (rows of buses, for example), in front of paying audiences and television cameras. According to the complaint, the “Duke Caboom” character in Toy Story 4 appropriates those IP rights.
One of the counts in the complaint is for trademark infringement (that’s the second count); another is for trademark dilution (that’s the fourth).* For both, we’ll want to push back hard on the idea that the plaintiff owns any protectable trademark interests beyond the name “Evel Knievel” itself. [* edited for clarity 30 Sept. 2020]
Can you review the allegations of the complaint, figure out what the strongest trademark ownership claims refer to, and sketch out our most promising lines of attack? Focus not only on the legal doctrine; focus on facts — both what’s alleged and not alleged — and where we could develop lines of research and evidence-gathering to put Disney in the strongest position possible.
I’ll need your memo – not more than 4 pages, as usual – no later than Friday, October 9.
Note for students:
Researching the life and career of Evel Knievel (born “Robert Craig Knievel”) will give you hours of amusement.
FALL 2019
Assignment Three
To: Junior Associate, Dewey, Cheatem & Howe
From: Managing Partner, Dewey, Cheatem & Howe
Date: November 25, 2019
Re: Trademark Question
The Management Committee of the firm has asked me to have you research the following trademark matter. As you know, the firm ordinarily does not handle intellectual property issues for its clients; we focus our practice on corporate law, representing venture capitalists and other investors in negotiating and documenting corporate finance and securities law matters. However, for reasons that should be clear without my elaborating further, we would prefer to handle this issue internally.
The firm has acquired an artwork by the visual artist Paul Rousso, titled “Kid Currency.” It is mixed media and styrene. It contains pink, orange, green, yellow and blue rectangles, with a textured, crushed look. Each rectangle contains designs duplicating the appearance of money from the board game Monopoly. The term “Monopoly” appears on all the rectangles.
The work is six feet tall, twenty feet wide, and roughly a foot thick. To give you an understanding of the issues here, a two-dimensional image of an excerpt of the work appears below.
The work is authentic, but so far as we are aware the artist did not obtain permission from the publisher and owner of IP rights in Monopoly, Hasbro, to reproduce images of the game money or the name “Monopoly.”
The firm would like to display the artwork prominently in the lobby of the building that houses the firm. As you may know, the firm is the owner of the building, and the firm’s name is displayed prominently on the building’s exterior, but the building has additional tenants. Several of our venture capital clients also have space here. As you know, the ground floor is occupied by a large retail branch of one of the country’s largest banks, Bank of the East. The lobby is used by employees and visitors to all of the building’s tenants. The question is whether the firm faces any meaningful risk of receiving a cease and desist letter or worse, an actual lawsuit, from Hasbro, if the firm displays the work as it currently proposes.
What do you advise?
Assignment Two
To: Outside trademark counsel, at Dewey, Cheatem, and Howe
From: General counsel, ACME Brands
Date: November 8, 2019
Re: Trademark Registration
Our in-house trademark registration paralegal has run into an unexpected problem, and I would like you to help us work through it.
On behalf of the company, she submitted an application to register the following mark:
ACME proposed to register the mark in Class 6 (covering common metals), because we are using the mark in connection with our well-known line of anvils, and in Class 13 (covering firearm products), because we also use the mark in connection with our line of blasting powders, explosive tennis balls, detonators, and earthquake pills. As you know, we sell our products to both amateurs and professionals.
Unexpectedly (as I noted), a US company called RABBIT & Co. has filed an opposition on the ground that ACME’s mark is confusingly similar to its previously registered marks.
RABBIT & Co. alleges that it is the owner of existing US registrations in the following three marks, in connection with selling hammers and tongs for use in forges. All of RABBIT & Co.’s marks are also registered in Class 6 [Note from Prof. Madison: the initial version of this text was “Class 2.” That was a typographical error.] We’re well-acquainted with RABBIT. It’s an established company that sells primarily to professionals.
RABBIT
I need you to take a close look at this matter and prepare a strategy for overcoming the opposition and securing registration of our ACME mark. What are RABBIT’s strongest arguments? How can ACME overcome them? Beyond what I’ve summarized above, what other facts and arguments are going to help us? Hurt us?
Thanks.
Assignment One
To: Outside trademark counsel, at Dewey, Cheatem, and Howe
From: General counsel, McLaren North America
Date: October 3, 2019
Re: Camouflage paint job
As you know, McLaren produces some the most distinctive high performance automobiles in the world.
McLaren North America recently relocated its headquarters from New York to Dallas. The move is part of an effort to renew and update several aspects of the company’s marketing, including its IP assets. Our Chief Financial Officer asked me to look into trademark protection for a distinctive “camouflage” paint job that the company used a few years ago on the prototype of our P1 model. You can see the paint job as applied here:
https://jalopnik.com/the-mclaren-p1-has-the-best-camouflage-ever-5978603
At the time, as that website indicates, it attracted a lot of attention. The CFO is interested both in ensuring that McLaren maintains its exclusivity in that design and also in setting up the company to monetize the design in appropriate ways.
I know that automotive companies have used various “camouflage” designs on prototype automobiles for a long time, possibly as a way to discourage photography when the cars are driven on test tracks. There may be other motivations and uses of these designs. McLaren’s press release associated with the P1 demonstration is available here:
https://www.autoblog.com/2013/01/25/watch-this-and-try-to-guess-what-will-powermclarens-p1-superca/
Can you please put together a brief analysis (not to exceed four pages) of the requirements, opportunities, and barriers associated with trying to register this design as a trademark under US law? You should assume for now that McLaren has met or will be able to meet any requirement that the design be “used” “in commerce” for trademark purposes. I’ll use your analysis as a basis for my briefing the CFO.
Thanks.
FALL 2017
Assignment Three
From: AM General Chief Legal Officer
To: Dewey, Cheatem & Howe, Attorneys at Law
Date: November 29, 2017
Re: Humvee trademark matter
As you know, at the direction of one of my direct reports (AM General’s chief intellectual property counsel), AM General recently filed a federal trademark infringement lawsuit against Activision, which is responsible for the ‘Call of Duty’ videogame franchise. The complaint alleges that Activision’s use of the design of AM General’s Humvee vehicle infringes AM General’s intellectual property rights.
When news of the filing appeared online, many trademark law commentators were widely, loudly, and publicly critical of AM General. They suggested that the case against Activision is so weak, given the widely-known precedent called Rogers v. Grimaldi and recent applications of that case, that the plaintiff (AM General) and the counsel who filed the complaint should be sanctioned for unethical behavior under Rule 11 of Federal Rules of Civil Procedure.
No Rule 11 motion has been filed or is contemplated, to the best of my knowledge. But the critical commentary is concerning both to me and, more importantly, to AM General’s Board of Directors. I have been asked to make a presentation to the Board to explain several things: AM General’s thinking in connection with filing the Activision lawsuit (the question here is the objective plausibility of AM General’s position, not its subjective thought processes), AM General’s strategy for saving face and avoiding sanctions in the context of what now appears to be a loser of a case, and AM General’s strategy for simultaneously protecting its trademark assets and respecting the legitimate rights and interests of consumers and fans of our brands.
I would like you to research and prepare a set of talking points and related analysis that I can use in my presentation to the board.
Notes for your use:
AM General’s Chief Intellectual Property counsel is an employee of AM General. She works for me.
An outside law firm other than Dewey, Cheatem & Howe prepared and filed the complaint against Activision.
The AM General v. Activision complaint is available here.
Assignment Two
[As background to this problem, assume that the following facts are true: Consider the Swedish outdoor clothing and equipment company Fjallraven, a name whose English meaning is “arctic fox.” Fjallraven is a long-standing and highly successful company throughout Europe. Fjallraven has no US trademark registrations and only began offering its goods to US consumers, exclusively through its website, in 2016. Further assume that in early 2017, Fjallraven created a US subsidiary, hired US staff (including a general counsel and a trademark counsel, and started working on plans to offer its products to US customers by distributing it in US retail stores. Fjallraven products today, however, are still available in the US only via fjallraven.com.]To: Fjallraven US Trademark Counsel
From: Fjallraven US General Counsel
Date: November 3, 2017
Re: “Fox” marks in US
One of our US marketing partners just alerted me to a situation that we need to investigate right away. It appears that a US firm has been marketing winter coats, wool sweaters, hiking pants, and lightweight bags and packs for hiking since 2005 using the brand name “Arctic Fox” and sometimes also using a logo identical to ours, in the shape of a fox’s head and tail.
What are our options, and what do you recommend? Please investigate and advise.
Assignment One
To: Outside Trademark Counsel
From: General Counsel, NG Accessories, Inc.
Re: Game Controller Branding Question
Date: September 29, 2017
I need some trademark law advice regarding the name of a product that we started selling a little over a year ago and would like to protect eventually with a trademark registration. The product is a video game controller for use with a first-person shooter video game, such as Overwatch or Halo. The name of the product is the “Nerf Blaster Controller,” or NBC. It’s a high-end, premium device, which retails at a suggested price of $99. That means that our customers are usually expert players, rather than casual video gamers. A majority of them are adult men. We only distribute our products in the United States.
We produce the device essentially by hand: We buy actual Nerf toy guns (usually toys in the Zombie Strike product line), made by Hasbro. Our technicians carefully disassemble each one, insert some electronic components (proprietary chips and software), and add a cable that the player uses to connect the controller to the player’s PC. Then the technicians reassemble the toy so that from the outside, for all practical purposes it still looks exactly like a toy. (We disengage the mechanism that the toy uses to “fire” soft foam bullets, but the bullets in their cartridge are still part of the toy.)
The packaging for our product looks nothing like the packaging of the original toys, but it’s pretty important to our team, and important to the marketing, that we sell our devices using the “Nerf” name, because our customers like the humor in using a Nerf toy as a video game “gun” or blaster.
Of course, we’re aware that Nerf is a well-known and long-standing brand associated with children’s toys that feature a soft, foam material. I did a brief search and learned that many years ago, video game controllers were on the market that actually used that foam and the Nerf name. So far as I can tell, that product line has long been discontinued. Our products are completely different; the foam part is irrelevant.
Can you look into trademark law and tell me whether we’re likely to have any problems getting our mark registered? Is there anything that we have to do at this point to protect our rights? Is there anything else that we should know?
Thanks.
FALL 2016
Assignment Three
To: Junior Lawyer
From: Senior Lawyer
Date: December 2, 2016
Re: GoGo Lunch Box matter
Our client is a start-up novelty products company called “GoGo” that has come to us for some legal advice regarding a new product.
The product is a rectangular, brick-shaped and sized lunch box made of a hard, durable plastic. In most respects, it resembles the large, rectangular lunch box sold by Lego that you can see at this Amazon.com site: https://www.amazon.com/LEGO-40230631-Lunch-Box-Blue/dp/B008KQ1C1M/ There are three key differences. First, our client’s design has six round knobs across the top, rather than eight or four (Lego also sells a square version of its lunch box). Second, the round knobs across the top of our client’s design are not printed with the “Lego” name or logo; instead, they are printed with the “GoGo” name, in a distinctive font and rainbow color pattern that evokes the “Pop” era and designs of the 1970s. And third, all of the packaging and promotion that GoGo has prepared is targeted at millennial adults rather than at children. The idea is that this will be a “retro” product that appeals to the hip nostalgia for which millennials are well known. GoGo is planning to call the product the “BrickBox” or the “LunchBrick,” because the iconic, famous Lego plastic toy is known generally as a “brick.”
The client has asked us for a brief review of possible trademark law concerns associated with this product, so I am asking you to put that together. To help you get started, I can share the fact that I know, off the top of my head, that all patents that Lego once had for its interlocking brick designs have expired, and that Lego has lost virtually all trademark lawsuits that it has brought against competitors who offered toys that relied on the style of interlocking brick and knob configurations for which Lego is famous. I also did a quick search of Amazon.com and found not only Lego’s lunchbox design (which GoGo is also aware of) but also a Lego “Brick Box” product designed to hold a bunch of Lego’s toy bricks.
Can you please look into this from a trademark law standpoint and get back to me with a four-page memo that outlines possible trademark law problems here, assesses their significance, and suggests solutions for any problems that need to be addressed?
Thanks.
Assignment Two
To: Junior Lawyer
From: Senior Lawyer
Date: November 4, 2016
Re: Arsenal matter
Our firm has been retained by Arsenal Cider House in Pittsburgh to prepare a response to the Opposition to our client’s application to register its “Arsenal” name as a trademark. The Opposition document can be found at the link below.
I don’t need you to draft a response itself. Rather, I need you to take a close look at the Opposition and, in a short memo, outline and summarize our client’s best litigation strategy for prevailing here. What arguments are strong? What arguments are weak? What should the client prioritize, tactically, in terms of legal and factual argument? If there are facts missing from the record so far, what facts do you recommend that we collect, either regarding our own client or regarding Arsenal Football Club, and what is the potential significance of those facts? Is this a case that our client should litigate aggressively, or should we look for an opportunity to settle case early, and if so, why and on what terms?
In short, I need you to write up a memo (four pages, max) that describes how I should advise the client, and I need it by Friday, November 18. Our client’s application itself is being handled by a different firm, so please do not address questions concerning the registrability of our client’s mark.
Thanks.
Link: Arsenal Football Club v. Arsenal Cider House
Assignment One
To: Outside Counsel
From: General Counsel, Car-Freshner
Date: September 30, 2016
Re: Validity of the Tree Marks
As you know, Car-Freshner makes the well-known line of scented, tree-shaped air freshener products for automobiles. The brand name today is “Little Trees.” The company’s portfolio of registered trademarks covers the design of the product and includes, for example, the following:
Recently, in a trademark infringement lawsuit filed in the federal District Court for the Northern District of New York, Car-Freshner alleged infringement of the Tree Marks by a company located in Kansas called Sun Cedar. Sun Cedar was producing air fresheners cut in a tree shape from pieces of cedar, which is naturally scented. After some pre-trial proceedings were concluded in favor of Car-Freshner, but before the case was decided on the merits, Sun Cedar discontinued producing the infringing products.
As part of Sun Cedar’s pleadings in response to Car-Freshner’s complaint, an argument was raised that concerns me, and I’d like you to look into it further and advise me both regarding its possible strengths and weaknesses and regarding what, if anything, Car-Freshner should do going forward to reduce the risk that this argument might be accepted by a future court.
The argument is that the Tree Marks are invalid because they consist of functional subject matter, and the functionality is demonstrated by the existence of an expired patent on the tree-shaped air freshener.
For your information and background, I’ve included (at the links, below) the ruling of the district court in our case against Sun Cedar (the judge does a nice job of summarizing Car-Freshner’s trademark position and the importance of the Tree Marks to our business) and the Answer and Counterclaims filed by Sun Cedar before that company filed for bankruptcy protection (that document summarizes the argument that I noticed regarding the patent). You can find the patent in question in that Answer and also at https://www.google.com/patents/US3065915
Links:
I need your advice, four pages maximum, by Friday, October 14 at 3 p.m.
FALL 2015
Assignment Three
[The following is a fictionalized story that borrows from real life people, firms, and events.]To: Junior Lawyer, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Date: November 30, 2015
Re: Helmets case
I know that it’s been a busy Fall for trademark work. We have one more matter to review.
To mark the release of the upcoming Star Wars film (“The Force Awakens”), our client the National Football League released images of imaginary professional football helmets decorated with themes from the fictional Star Wars universe. Each helmet is a humorous mash-up of an actual NFL team helmet style and a theme or item or character from Star Wars. The NFL controls all rights to the logos of the reall NFL teams, of course, and we can assume that the NFL cleared relevant IP rights with the original designer of the helmets (apparently, that is an artist named John Raya) and with Lucasfilm and Disney, which the NFL assumed owns rights to everything associated with Star Wars. You can see the full lot of the helmets here: http://www.nfl.com/photos/0ap2000000323761/0ap2000000323747
This matter concerns only one of the helmets, for the “Eiseley Troopers,” which is a mash-up of the Indianapolis Colts football helmet and a portrait of an imperial StormTrooper. A photo of the helmet appears below.
Here is an image of the original Stormtrooper helmet design:
The NFL has received notice from the designers of the original Stormtrooper costume, Andrew Ainsworth and the Shepperton Design Studio (SDS), that promotion of the helmets by the NFL violates their rights in the design of the costume under US trademark law. Ainsworth is British and SDS is located in the UK, but of course the costumes have been widely distributed and promoted in the US and around the world. The application of US trademark law isn’t really in question here. But it has previously been adjudicated both in US and UK courts that Ainsworth and SDS do not own US copyrights in the costumes. Lucasfilm does. So the current claim smells to me a bit like an end-run around US copyright law. Is it? What are the odds of Ainsworth and SDS succeeding here, if they go ahead with a lawsuit? Are there any other defenses to the claim that we might raise? Are there any other considerations that we should take into account in preparing advice and counsel for the client?
I need your work product — a 4-page memo, max — not later than 12 noon on Friday, December 18, 2015.
Thanks.
Assignment Two
To: Junior Lawyer, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Re: Wine Trademarks
Date: October 30, 2015
I need you to take a look at a new trademark problem that just walked in the door.
Our client is Union Oaks Wine Co., which is headquartered in the wine country of Sonoma Valley, California. It produces several different varieties of wine under the “Union Oaks” name and mark, including Chardonnay, Merlot, Cabernet, and Sauvignon Blanc. (If you’re not a wine drinker, that’s fine; these are all, in essence, names of grape varieties that are used to distinguish types of wine.) Union Oaks started producing wine in 2000 and started selling it nationally under the “Union Oaks” mark in 2007. Each bottle of Union Oaks wine sold since then had had the words “Union Oaks” printed prominently on the top of the main (front) label of the bottle, in an attractive, stylized script. Union Oaks owns a federal trademark registration for “Union Oaks” as a standard character mark associated with wines and wine-related products. The application was filed on February 18, 2013, and the registration issued on March 25, 2015. No opposition was filed.
However, Union Oaks Wine has received a letter from counsel for a winery based in the Napa Valley, which is also part of California’s wine country but which is one valley to the East of Sonoma Valley. The letter is sent on behalf of the “Oakville Union Winery.” Oakville Union also sells high quality wines, including Merlot, Cabernet, and Sauvignon Blanc wines. It started business in 1992 and started selling wine in bottles in 1995. Oakville Union sells to customers across the US. The letter claims that there is an obvious likelihood of confusion between the “Union Oaks” mark and their “Oakville Union” mark, and it demands that our client cease using the “Union Oaks” mark – or else Oakville Union will petition the Trademark Office for cancellation of the Union Oaks registration.
Because the wine business is a collection of small business owners who, mostly, know each other and each other’s products, our client brought in representative bottles of Oakville Union wines. I’ve taken a quick look, and what leaps out at me is the fact that the current bottles have one label, on the front, which say “Oak Leaf” in a large script at the top, followed by an image of three green oak leaves in a cluster, and below that the name of the wine (Merlot, etc.). At the bottom of the label is the phrase “Oakville Union Winery, Oakville, CA,” in a smaller version of the same script in which “Oak Leaf” appears above.
I was scratching my head a little bit, but the client explained that Oakville Union is known for playing around with its labels. Originally, in 1995, Oakville bottles had a front label that consisted of the “Oak Leaf” name, the leaf design, and the grape, and a back label printed in a simple, small Times New Roman typeface that contained production information (the percentages of each grape type included in that type of wine, and where the grapes had been grown), and the phrase, “Produced by Oakville Union Winery, Oakville, CA.” In 2006, Oakville Union dropped the back label. In 2008, the back label returned, but it only included the “Produced by Oakville Union, Oakville Winery, Oakville, CA” phrase in the same small, simple Times New Roman typeface and nothing else. In June 2015, the back label disappeared again, but the “Oakville Union” phrase began to appear on the front label. I also took a look in the TESS system at the Trademark Office; Oakville Union has no trademark registration for an “Oakville Union” mark.
It seems obvious to me that there’s no real likelihood of confusion between the two names, but the client insists that we prepare a strong response to this letter that argues that the Oakville Union mark is invalid in the first place, or, even if it’s valid, that it’s not prior in time to our client’s mark.
Can you please work up a short memo, not more than 4 pages in length, that sketches Oakville Union’s likely arguments on these points and outlines how we should respond? If there are factual questions that need to be answered in order for you to complete your analysis that I haven’t answered above, indicate what those are and how and why they matter.
I need your work product not later than 3 pm on Friday, November 13, 2015.
Thanks.
Assignment One
[Helibacon is a real company. I caution you against searching YouTube for relevant videos. Hellabacon is a fictional company, selling fictional products. The fact pattern below is fictional and is made up solely for purposes of this course.]To: Junior Lawyer, Dewey, Cheatem & Howe
From: Senior Lawyer, Dewey, Cheatem & Howe
Date: September 25, 2015
Re: Hellabacon
Our client is a company known as “Hellabacon,” which produces and sells “Hellabacon” brand bacon products – lean bacon, smoked bacon, flavored bacon, and so on, all under the “Hellabacon” mark. It’s a startup company based in Austin, Texas, founded early in 2015 by a group of recent University of Texas graduates who figured that they would capitalize on the present fascination with bacon by combining it with the fresh and organic food sensibility that is central to the success of Whole Foods chain of food markets – which is headquartered in Austin. All of the bacon sold by Hellabacon is produced from farm-raised free range pigs, fed only the highest quality hormone-free organic feed. Stress-free pigs make tasty bacon, goes the company’s philosophy. Though the company was started in Austin, it has grown quickly and now sells Hellabacon in organic meat sections of markets in Santa Fe, Boulder, Nashville, and Madison, Wisconsin.
In light of that, Hellabacon was especially surprised and disappointed to receive a cease-and-desist letter recently from a company identifying itself as “Helibacon,” which offers hunting-by-helicopter services in Texas. Texas, it appears, has a serious problem with feral (wild) pigs consuming farmers’ crops, particularly rice. There are millions of wild hogs running amok in Texas, destroying hundreds of millions of dollars’ worth of crops each year. And, it turns out, there is a market for hunters who are enthusiastic about shooting them from the air. Helibacon has been in business since before 2015, operating legally under Texas law, and, it appears, it claims exclusive rights in the word “Helibacon.” It also claims exclusive trademark rights in its logo, a picture of which appears below. The design seems to me to evoke the “nose art” with which US airmen decorated their airplanes during World War II.
According to the cease-and-desist letter, our client’s name infringes Helibacon’s trademark rights. Helibacon is demanding that Hellabacon stop using a sound-alike name.
I did a quick search; Helibacon appears not to have a federal trademark registration or pending application. I couldn’t find a quick way to search Texas state trademark registrations, so let’s assume for now that Helibacon does not have a state registration, either. But the letter relies on Helibacon’s common law rights under Section 43 of the Lanham Act, and Helibacon claims that its marks are “inherently distinctive,” whatever that means, and that our client’s name is causing consumer confusion.
Our client has asked us to come up with a quick analysis and strategy for responding to this claim. I assume that this means that we should start from the ground up, namely, is Helibacon’s claim to the word “Helibacon” even valid in the first place? If it is, then I suspect that we’ll advise the client to change its name (thoughts on what name to adopt would be welcome – the client wants to use something that means “great bacon”). But if it is not, the client may want to come back with a strong response. Much better to come up with a good argument that might force the helicopter hunters to go a different direction. It’s possible that we need to dig deeper into the facts to figure out what advice to give. So, if we need to gather more information, you should include in your analysis what we need to know, how to figure it out, and why it’s important.
I need your work product by October 9. Four pages maximum, please. The client doesn’t want to read any more, and neither do I.
FALL 2014
Assignment Three
To: Outside Counsel
From: Chief Financial Officer, Penn Petroleum
Date: November 24, 2014
Re: Branding Problem
As you know, over the last 5 years Penn Petroleum has had tremendous success nationwide with the introduction of the first premium fuels for automobiles that blend ethanol (produced from grain, principally corn) and gasoline (produced from petroleum). Our fuels are sold at more than 500 fueling stations and mini-marts (7-11, Casey’s General Store, and the like) under the “E-Go!” mark (the “E” refers to the positive ecological impact of the product, when compared with gasoline), and a stylized logo that we refer to as the “Candy Corn” mark. Both the E-Go! name and the Candy Corn logo are registered marks with the USPTO, and Penn Petroleum has spent upwards of $10 million per year for the last 5 years establishing brand awareness for those marks among travelers and other fuel purchasers.
Many of our distributors are Penn Petroleum franchisees operating fueling stations that, by contract with us, are authorized to sell only E-Go! products. However, some of our distribution is handled by third parties – see the references above to 7-11 markets and Casey’s General Store markets, for example — and that’s where our current problem has arisen. Out in West Des Moines, Iowa, a Casey’s General Store that has been handling EGo! fuels for the last 3 years (under a 10-year contract with us, which has 7 years left to run) has decided to offer non-E-Go! branded ethanol/gasoline blends in addition to EGo! fuels. The store has 6 fuel pumps in all. Four of them offer E-Go! branded fuels; two of them offer other – less expensive – ethanol/gasoline blends labeled “Local Gro” (the fuel apparently is supplied by a local ethanol plant). The Local Gro fuels are sold for 10 cents per gallon less than the E-Go! branded products available just a few steps away. So far as I know, each pump is accurately labeled with stickers or signage that tells the customer the brand of the fuel that’s dispensed by that pump.
The store advertises itself on site with a standard tall gas station pole, visible from a significant distance away, that bears 5 foot x 5 foot lighted “Candy Corn” signs supplied by us (here’s an image of the sign). Our contract with Casey’s is not an exclusive distribution arrangement, but that doesn’t mean that Casey’s or anyone else is entitled to free ride on our brands or undermine our business. It’s pretty clear to us that this particular Casey’s is using our brand to attract customers, then selling them cheaper gas (which, we believe, provides Casey’s a better profit margin). Customers in this business often don’t pay a lot of attention to what’s in the pump; we believe that they tend to follow signage that they see from the road and assume that the fuel matches the sign.
This particular Casey’s is visible from the Interstate highway, so it attracts a lot of business from travellers criss-crossing the US. But Casey’s is a giant Middle West operation, with a lot of stores in small, rural communities. Not only are we peeved by what’s happening in West Des Moines, but we’re worried about what might happen on a broader scale.
You’re the trademark expert. What are our options here? I need a workup of our possible legal claims and their strengths and weaknesses (4 pages maximum) by 12 NOON on Friday, December 19, which is the last day of final exams.
Assignment Two
To: Junior Associate
From: Senior Partner
Date: November 2, 2014
Re: Quick Eats
Here’s a tasty case for you. Our client is Quick Eats (QE). QE owns restaurants operating under various names around the Eastern seaboard of the United States, including a small chain of restaurants called “In and Out Eats.” “In and Out Eats” is the name of QE restaurants that have been operating in various beachfront communities in New Jersey, Maryland, Virginia, and North and South Carolina for many decades (in some cases). The first In and Out Eats restaurant opened in Virginia Beach, Virginia, to serve returning U.S. military personnel and their families, sometime after the end of World War II. A second restaurant opened in Wildwood, New Jersey in the early 1950s, and there are a total of 20 restaurants now operating in the chain. The company is a real mom-and-pop outfit, which does almost no advertising outside of the community where each restaurant is located. However, QE has shared with me that it has been exploring possible restaurant locations in other vacation areas in the Eastern U.S. and along major interstate highways on the East Coast, not necessarily restricted to the coastline. It has also shared with me that it has been approached about being acquired by a national restaurant company.
Each In and Out Eats restaurant is a sit-down, family-style restaurant that serves grilled sandwiches, pasta, and drinks that include sodas, milkshakes, and fruit juices. The restaurants serve lunch and dinner, and they sell grilled cheese sandwiches and French Fries on a limited children’s menu. They do not currently offer a take-out or To-Go menu, but apparently the first few restaurants were early, primitive drive-ins.
Quick Eats just received a cease-and-desist letter from In-N-Out Burger, a fast-food hamburger chain that operates well over 150 restaurants under that name from California across the desert Southwest to Texas. In-N-Out sells burgers, fries, sodas, lemonade, and milkshakes in restaurants that apparently look stereotypically “Californian”: lots of white tile and red trim, palm trees, and a drive-through line. In the letter, In-N-Out claims that it owns a federal registration in the word mark “In-N-Out Burger” that dates to 1976 – and which is now incontestable — and that its common law rights date to the late 1940s. Over the last decade, apparently it has been on an impressive expansion push, moving out of its historic base in Southern California. In-N-Out claims that it just learned recently about QE’s restaurants, via word of mouth in the restaurant industry about QE’s plans to expand. The letter demands that QE change the name of all of QE’s restaurants, because the In-N-Out mark (which I take to refer to the character mark, not any design marks or trade dress) is so well-known throughout the United States.
Quick Eats wants to know what its options are in responding to the letter. Based on my experience with these folks, they’re pragmatists. They’ve got enough money to stand and fight if that’s the prudent thing to do, but they’re wise enough to know not to throw money away. I want you to figure out what the relevant law on this question says, and then I want you to work up a set of issues (both facts and law) that I need to go over with the client. It may be the case that we’ll need to do some factual research here; I don’t want you to do the research itself but instead work up a game plan. What do I need to know before I can give advice here, and why do I need to know it?
Assignment One
To: Junior Lawyer
From: Senior Lawyer
Date: Sept. 26, 2014
Re: Pick Chow!
Our client, Online Tools (OT), just lost a summary judgment motion in a trademark case against the U.S. Department of Agriculture. The district court ruled against OT based on the defendant’s likelihood of confusion argument, but the judge took some shots in dicta at the validity of our client’s mark. I’d like you to take a look at the relevant law and facts and come up with a game plan for defending the mark’s validity should this defendant – or anyone else – pursue an argument that the mark is invalid, and either try to have the court order that the registration be cancelled or ask the Trademark Office directly to have it cancelled.
The basic facts are pretty clear, and I’m providing you with the relevant documents. The Amended Complaint (which you can read here) describes the background; our client developed an app for children based on the idea of healthy eating, and the design of the app was registered as a mark with the United States Patent and Trademark Office (you can see the registration here). The registration process apparently was smooth (no opposition was filed), and the mark was registered based on the client’s claim of inherent distinctiveness.
The court’s order on the motion for summary judgment (which you can read here) makes what the client believes are some unnecessary and unwarranted comments about the validity of the mark. I have to say that I, too, am scratching my head a bit. Nonetheless, we need to line up our arguments in anticipation of a more direct attack on the mark’s validity. As I noted above, what is the relevant law, what are our strongest legal claims (and what are our weaknesses, in light of the law), and what additional facts or factual research should we undertake to bolster the mark’s validity?
In addition to the linked documents, here is a link to the client’s mark as it appears in context, on the relevant website. And just for your information, here’s the accused infringing mark from the litigation against the USDA.
FALL 2013
Assignment Three
To: Junior Lawyer
From: Senior Lawyer
Date: Dec. 1, 2013
Re: Dr. Martens Matter
Our firm has been retained to represent the defendant CELS Enterprises in a new case, AirWair v. CELS, filed in the federal district court for the Northern District of California. The client wants us to move forward full-steam ahead on a defense; its view is that fashion designers have been pushing too hard and succeeding too broadly with anti-counterfeiting lawsuits. We are going to take a hard-line stand here. That includes possible arguments that the plaintiff’s marks are invalid as well as that our client has not infringed and/or diluted those marks.
Please take a look at the plaintiff’s Complaint (link below), paying special attention to the factual allegations. At this point, of course, these are merely allegations rather than facts or evidence. I’d like you to draft a summary of the key points of attack – factual and legal – which we will later work into a formal discovery plan and overall strategy. We can’t know right now, of course, which lines of argument are going to succeed, but I’d like you to highlight the key factual and legal questions to ask and the key areas where we should be doing investigation and fact-gathering.
A copy of the Complaint is available here for your review.
Please put your thoughts into a memo of not more than four (4) pages. I need your memo no later than Friday, December 20, 2013 at 12 noon.
A copy of the Complaint is available here for your review.
Assignment Two
To: Junior Attorney
From: Senior Attorney
Date: November 1, 2013
Re: To Kill a Mockingbird matter
Our firm has been contacted by the defendant in a trademark infringement lawsuit brought by Harper Lee, the author of the famous American novel To Kill a Mockingbird.
The defendant is the Monroe County Heritage Museum in Monroe County, Alabama, which is accused of the unauthorized use of the phrase “To Kill a Mockingbird” in association with the sale of merchandise and other marketing matters.
We are bidding for this work against other law firms that have also been contacted about the representation. I need your help in constructing a strategy that I will propose to the Museum’s Executive Director in the hope that it will lead to our firm’s being retained.
As you may know, and as the Complaint describes, Harper Lee and the Museum are also engaged right now in an opposition proceeding in the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office. Harper Lee has applied to register the mark “To Kill a Mockingbird”; the Museum has filed an opposition.
A copy of the Opposition is available here, and a copy of Harper Lee’s response is available here.
Our firm has not been contacted in connection with representing the Museum before the TTAB, but of course the Museum will be interested in understanding how its strategy in the lawsuit and its strategy before the TTAB are related.
I’d like to get your thoughts on the three to five most important arguments to raise in the case, the legal and factual uncertainties associated with each one, and the likelihood of their respective success.
Please put your thoughts into a memo of not more than four (4) pages. I need your memo no later than Friday, November 15, 2013 at 3 p.m.
Assignment One
To: Junior Associate
From: Senior Partner
Re: “Lucky’s” mark
Date: September 30, 2013
Our office represents Bob Callahan, known as “Lucky.” The nickname has something to do with a childhood run-in with a neighborhood dog; I’ve known him as Lucky even since I met him as a client, 10 years ago, and he claims that he has been known as Lucky to family and friends since he was in high school.
Lucky Callahan owns a restaurant in town, currently called “Lucky’s Cantina.” He has owned a restaurant at that one location under the name “Lucky’s” since 1998; it has been titled, at different times, “Lucky’s Inn,” “Lucky’s Diner,” “Lucky’s Grill,” and, since 2009, “Lucky’s Cantina.”
Recently I came across an opinion from the Sixth Circuit titled Lucky’s Detroit v. Double L, Inc. The upshot of the case, involving two restaurants called “Lucky’s,” appears to be a judgment that forbids the defendant from using that name.
Can you please take a look at that opinion and give me your thoughts as to how it might apply to our client? What’s the risk that he may be required to change the name of his restaurant? Should we advise him to do that now, in order to eliminate that risk? As you might imagine, Lucky Callahan would be reluctant to do that, given his own history, the reputation that he has cultivated over the years, and the expense of making a change now. But please tell me if this recent case suggests that he should, and tell me if there is anything else we should know, or find out, before making that call.
I need your written analysis not later than Friday, October 11, 2013.
The Sixth Circuit opinion is here.