This is part of the course website for LAW 5694 – Trademark Law for the Fall 2023 edition of the course.
The course will meet on Mondays and Wednesdays from 10:30 am to 11:50 am. The class will meet on Zoom rather than face to face. Class meetings will be recorded, and the class recordings will be posted afterward to YouTube.
- Syllabus and readings (home page)
- Important course information: materials, mechanics, policies, and grading
- Writing assignments and related instructions
- Open Educational Resources (OER) copyright and permissions information
Writing assignments: 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
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. This course may require different formats.
How to succeed
Although the formats may change, professional expectations regarding effective communication have not changed. Legal writing 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 a great work product in Professor Madison’s courses.
For help with basic writing questions (grammar, syntax, word choice, active vs. passive voice, and so on), consider trying editing / writing correction / grammar checking software. A good choice – with a free option – is Grammarly. An alternative choice that may be better suited to professional writing but one that costs real money, is WordRake. WordRake may be a useful investment now that pays off over a full professional career; the founder and creator of WordRake, Gary Kinder, is a tremendous writer in his own right. I took a writing seminar from him when I was a junior lawyer, and I still remember and use his lessons even today.
Rubric
The rubric used to mark the assignments is available here.
Writing assignment due dates
- Assignment 1: Friday, October 6, 2023, at 3 pm.
- Assignment 2: Friday, November 10, 2023, at 3 pm.
- Assignment 3: Last day of exams (Friday, December 8, 2023), at 12 noon.
Sample questions
Assignments
Assignment Three
[The following facts are hypothetical, although they are based on real world events.]To: Junior associate, Engulf & Devour
From: Senior associate, Engulf & Devour
Re: TS and AY matter
Date: November 13, 2023
As you may have heard through the grapevine, this law firm has been retained by Taylor Swift, the global celebrity and musician.
Her team has brought to our attention a matter of unusual delicacy, and I need your help in thinking it through. As I understand things, here are the facts:
A number of years ago, the musician Alfred Yankovic, known popularly as “Weird Al” Yankovic, produced a parody version of one of Taylor Swift’s early hit songs. The “Weird Al” song is titled “TMZ,” and it is a parody of the Taylor Swift song “You Belong With Me.” You can hear the Yankovic parody on YouTube, here. I assume that you do not need a pointer to the Taylor Swift original.
As is his custom, Yankovic sought and obtained permission from Taylor Swift’s team to produce and distribute “TMZ.” The team confirms today that there is no question: the parody song is authorized as a matter of copyright law.
(Given your relatively young career, you may not be fully aware of Al Yankovic’s record and status as a musician. Recently, he was the subject of an autobiographical film. The young Al Yankovic bears an uncanny resemblance to Daniel Radcliffe, star of the Harry Potter movies. You can see the trailer for the film here.)
As you likely know, following a dispute between Taylor Swift and her record label (“Big Machine Records”), she has undertaken to re-record and re-release the music that appeared on the six albums that were released originally by Big Machine. Because Taylor Swift owns the copyrights to the music, her new recordings are clearly authorized under copyright law. For commercial purposes, however, those new recordings have been released with an addition to the original album and song titles. “You Belong With Me” was re-released in 2021 as “You Belong With Me (Taylor’s Version).” The song appears on the album titled “Fearless (Taylor’s Version).”
So far, so good, in copyright law terms. However, it appears that the parody song “TMZ” has also been re-released, in its original musical form but with a new title: “TMZ (TAY’s Version).” The song is available under that title on Spotify and other streaming services, and on YouTube and other videosharing sites. Taylor Swift’s team has not yet confirmed that the new release was authorized by Al Yankovic, but for now we’re working on that assumption.
The problem, of course, is the title. We haven’t yet tracked down all of the registrations, but we are advised that Taylor Swift has a number of US registrations for the name “Taylor Swift” for a variety of entertainment products and services, and for merchandise.
Because, as you no doubt know, both Taylor Swift’s “(Taylor’s Version)” recordings and the recent “Eras” tour have been blockbuster successes in commercial terms, her team is outraged by what they interpret as a naked attempt by Al Yankovic to capitalize on her brand and on her success. They assert that “TAY’s Version” in the title of the re-released “TMZ” will be interpreted by “Swifties” (as Taylor Swift fans are known) as an unambiguous reference to Taylor Swift. As a “Weird Al” Yankovic aficionado of long standing, I can report that “TAY” is interpreted by his fans on social media as “The Al Yankovic.”
The team’s charge to us is to figure out how to get a remedy that gets “TMZ (TAY’s Version)” out of circulation. My charge to you is: is this even possible? What are our options? What’s likely to succeed, and why? What’s likely to fail, and why? What can and should I tell our new client about what we can do and what we recommend?
For obvious reasons, even more than the ordinary amount of professional discretion and confidentiality is expected in this matter. Furthermore, given the significance of the client to the firm, now and in the future (I hope), it is imperative that we all do our utmost to put our best collective feet forward to get Taylor Swift what she wants, if at all possible.
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.
Added for Fall 2023: If you use ChatGPT or any equivalent AI-based writing service in preparing your response to this assignment, you must disclose the identity of the service and how, precisely, you used it.
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 Friday, December 8, 2023, 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
To: Junior lawyer, Dewey, Cheatem & Howe
From: Partner, Dewey, Cheatem & Howe
Re: Restaurant matter
Date: October 27, 2023
As you know, our firm offers legal services to food entrepreneurs, with a special focus on clients opening new restaurants in the so-called “fast casual” marketplace. This matter concerns one of those clients and a question that’s arisen about the color scheme chosen for their new location.
The client is called Big Dog Hospitality, or BDH for short. The owner of BDH, Sam Gerard, is in the process of planning a new restaurant that he intends to call “Simply Red.” The concept for “Simply Red” is, it appears, simple. The restaurant will serve a limited menu that focuses entirely on what I’ll call, generically, hamburgers – although the beef will be locally sourced and all of the cheeses, vegetables, and condiments will come through an organically-certified farm-to-table pipeline, and buns will be baked locally by artisanal bakers, sourcing appropriately. Sides, desserts, and drinks (including lemonade, iced tea, milkshakes, and alcoholic versions of all three, and there will be a cocktail menu to go with wines and beers) will be, similarly, locally produced, organic, and so on.
The décor of the restaurant seems to be the crux of the issue. Everything will be red. Placemats, napkins, tableware, and glassware will be red. The surfaces of the tables and seats (both benches and seats) will be red. The walls will be red; the floors will be red; the hosts, servers, and kitchen staff all will be outfitted in red uniforms.
Using what apparently is a cutting-edge format for efficient dining room operation, customers will be greeted at the door by a host/order-taker; will place their orders via smart phones promptly as the come in; and then will be escorted to their tables by the host. When the food order is ready, it will be delivered to the table. The hamburgers themselves can be ordered both in pre-designed configurations specified on the menu and also in idiosyncratic versions specified by the customer.
Physically, the dining room will resemble a fast-food restaurant, with hard plastic tables and booths that seat 4 to 6 people each, and some number of 2-top and 4-top stand-alone tables. But the food itself will be significantly higher quality than the food in a fast-food restaurant, with prices somewhere above typical fast-food prices but below prices charged in sit-down or other fast-casual restaurants.
Sam Gerard has asked us to advise him as to trademark and branding questions. I’ve already told him, off the top of my head, that In-N-Out may have a concern about the red-focused color scheme. Some time back, I saw a case in which In-N-Out sued another restaurant over the red-themed décor. (I checked, and my memory is right. When you can, have a look at In-N-Out Burgers v. Doll N’ Burger, 2022 WL 791924 (E.D. Michigan March 14, 2022)).
Somewhat disappointingly, to me at least, when I mentioned In-N-Out, Mr. Gerard replied that he knows In-N-Out extremely well from his childhood in Southern California and imagines “Simply Red” as a kind of upscale “homage” to that chain. (“Simply Red” is expected to open in suburban Nashville, Tennessee, and there are no current plans to develop more than one location.) He also told me that he thought about approaching In-N-Out to talk about a business partnership or even some kind of licensing deal but then decided against it; he didn’t want to be told “no.” And, last, he says that he has completely fallen in love with the “all red” color scheme and thinks that the restaurant will be a big hit. Apparently, he has also fallen in love with some pop psychology floating around the restaurant industry that suggests that the color red is good for restaurants, because it makes people hungry. Allegedly.
I need from you an outline of questions, issues, and possible recommendations that I can use in my next, follow-up conversation with Mr. Gerard, and I need it from you soon — in two weeks – and in an easy-to-follow and possibly “to share” format: an email of not more than 1,200 words.
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.
Added for Fall 2023: If you use ChatGPT or any equivalent AI-based writing service in preparing your response to this assignment, you must disclose the identity of the service and how, precisely, you used it.
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 and any computer services that 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. No hyperlinks 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. Please upload your memo to TWEN as an attachment; do not cut and paste the text of your work into the submission “box.”
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, November 10, 2023, 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.
Assignment One
To: Junior Trademark Associate, Dewey, Cheatem & Howe
From: Senior IP Partner, Dewey, Cheatem & Howe
Re: New Functionality Case
Date: September 21, 2023
We have a candy-making client that’s up in arms over a new development in trademark law, and I need your help in figuring out how to advise them.
Here’s the background.
Because I know that you keep up with the advance sheets, you must have seen the Third Circuit’s recent opinion in PIM Brands v. Haribo of America, ordering the cancellation of a design mark on the ground that the design at issue is functional. Here’s a copy of the opinion for your reference; fortunately, it’s pretty short. You undoubtedly noticed that the crux of the case involved a registered mark for a wedge-shaped candy that looked and tasted somewhat like a slice of watermelon. Both the plaintiff’s candy and the defendant’s candy are chewy.
Our client is HotRocks, Inc., a relatively new designer and producer of hard candies. Because of the chemistry of hard candy, and because HotRocks employs some hot shot designers, HotRocks has been able to produce a line of hard candies that precisely mimic the shape, color, and taste of a wide range of fruits: hard candy orange slices that are indistinguishable from actual (very small) oranges; hard candy green and purple grapes that look exactly like actual grapes; a range of different apple slice candies whose “skin” mimics the color of several different apple varieties, and so on. There are 25 fruits in this line of candies in total. The company doesn’t produce anything else.
The design and engineering precision associated with these candy “replicas” (the client’s term) is extraordinary, as is the investment that went into producing them and that the company very much is trying to recoup. HotRocks tells me that the company spent $5 million on producing the first round of candidates and has spent another $1 million in advertising and marketing over the 10 years of the company’s existence. The point is that these candies are worth a premium price. Sales have been growing but haven’t met expectations; in 2022, the company had $2 million in revenues – and lost money, overall. HotRocks sells its products exclusively through distribution deals with Williams Sonoma and similarly upscale markets and food equipment stores.
The PIM Brands case was closely followed in the confectionary business, and when the opinion was released the other day, the president of the company called me in a panic. They’re worried, of course, that low cost competitors will rush into the market and undercut HotRocks’ product on price and on quality. Unfortunately, the company was never willing to pay us to register trademarks for them. What do I tell the client? Can their current designs be protected by trademarks – registered or otherwise – despite the PIM Brands case? If so, how? If not, what should the client do? Maybe we need more information than I’ve given you. If so, what do we need to know?
I need your memo, summarizing the matter and your views, by Friday, October 6, 2023, at 3 pm. Four pages only, please, and not anything more.
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.
Added for Fall 2023: If you use ChatGPT or any equivalent AI-based writing service in preparing your response to this assignment, you must disclose the identity of the service and how, precisely, you used it.
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 and description of any AI consultation 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 6, 2023, 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.