Trademark Law Writing Assignments – Fall 2024

• 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, experienced writer in his own right. Professor Madison says: “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 4, 2024, at 3 pm.
• Assignment 2:  Friday, November 8, 2024, at 3 pm.
• Assignment 3:  Last day of exams (Wednesday, December 11, 2024), 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 & Howe
From:   Senior Partner and IP Practice Group Leader, Dewey, Cheatem & Howe
Date:     November 13, 2024
Re:        Fresh Eyes on the “Merchandising Right”

This is something of a “blue sky” or speculative project. I need your help in brainstorming the makings of an argument to offer in an appeal of a case that hasn’t even reached a conclusion in the trial court.

I am sure that you have been keeping tabs on the litigation ongoing between Penn State and Vintage Brand.  So that you are fully up to date, here is a copy of the First Amended Complaint (the most recent pleading from the plaintiff).  The case is going to trial as I write, before a jury. Opening arguments were yesterday.  The trial is expected to last through the end of next week and to wrap up before Thanksgiving.

Through the news, I picked up some key pieces of the parties’ opening statements:

For the plaintiff, Penn State: “You can’t take what doesn’t belong to you. … You can’t take somebody else’s good name. … that identity, that good name, is ‘Penn State.’ … The defendant’s merchandise doesn’t have to be identical to the real thing to cause confusion. … Is all of this merchandise the real deal, or is it fake? … If you can’t tell for sure today, just imagine how you’d feel yesterday, coming across this online or seeing it on someone walking down the street.”

For the defendant, Vintage Brand: “Penn State thinks it has the trademark right to control all images that simply invoke thoughts of the university. … Even though the Penn State name is there, it’s not doing trademark work. It’s about Penn State, it’s not from Penn State.”

In other words, Penn State seems to be arguing that the case is a simple matter of theft.  Vintage Brand appears to be pinning its hopes on a rather fine distinction in trademark law.  As a veteran of IP litigation, that’s a pretty standard pattern.  I fully expect that the jury will come back with a verdict in favor of Penn State.

I am anticipating an appeal, and even though our firm does not represent Vintage Brand, we do represent clients that are in the “merchandising” industry (licensed t-shirts, sweatshirts, memorabilia of various sorts), and they are watching this case closely.  Assuming that the case goes up on appeal to the Third Circuit, we may be asked to prepare and file an amicus brief on behalf of our clients – a friend of the court brief – to support Vintage Brand.

That’s where I need your help.  The claims in Penn State lawsuit rely directly on a well-known precedent from the Fifth Circuit, known generally as “Boston Hockey.”  Here is a copy of that opinion; I have indicated the critical passages in bold type [pdf version]. In fact, it’s fair to say that the entire “merchandising” industry, now worth millions (billions?) of dollars, is built on that single legal precedent.  Recent cases, such as Board of Supervisors for LSU v. Smack Apparel, have relied on it.  If Boston Hockey is no longer good law, at least in the Third Circuit, our clients will save massive amounts of money, in the sense that they will not have to pay royalties to trademark owners.

For Vintage Brand to win on appeal, in my view the court will need to be persuaded that it should not follow Boston Hockey.  That’s a question of law, not a question of fact.   So don’t concern yourself with whether evidence of likely confusion is or is not sufficient in the Penn State case.  The district judge in the case, in a very thoughtful opinion, analyzed the Boston Hockey issue and ruled that Penn State could not avoid Vintage Brand’s claims that its trademarks should be cancelled on the ground that they are not distinctive as to source. In other words, the court rejected Penn State’s theory that Boston Hockey provides a kind of “per se” form of trademark infringement. But Vintage Brand still has to defend against a claim of trademark infringement based on the facts of the case, that is, based on evidence of likely confusion.  Boston Hockey isn’t exactly thriving, but it isn’t dead, at least not in this court. Here is the court’s ruling on Penn State’s motion to dismiss Vintage Brand’s claims [pdf version].

On appeal, we will want to sharpen the spear.  The point to make, I think, is that likely confusion should not matter where the mark and the merchandise are, for all practical purposes, one and the same.   Trademark law should be pro-competitive and pro-consumer, yet the “merchandising right” that Boston Hockey created is anti-competitive and anti-consumer.

Law professors have been agitated about this part of trademark law for some time.  If you’re curious about their typically excessive theoretical ramblings, you might look at this law review article.   In the Penn State case, Judge Brann had a lot to say about it.

But don’t go down that rabbit hole, at least not too far.  I’m more interested in law and logic, not theory, and I’m especially curious to learn whether we can build a case against Boston Hockey based on KP Permanent Make-Up, Inc. v. Lasting Impression.  The Supreme Court said there that sometimes, a little confusion isn’t a bad thing.  Or something along those lines, as I recall.  Also, the Court’s opinion in Dastar  said something about how trademark law focuses entirely on confusion as to source and should be distinguished sharply from copyright, which covers expression and art.

In short, please put together your best and most creative thoughts about the design of a legal argument that the Third Circuit should not adopt Boston Hockey.  My instincts tell me: that’s the only way that Vintage Brand will come out of this case on top.

I need your analysis by December 11, at 12 noon.  Please confine your thoughts to a well-organized 1,200 word email or to a PowerPoint presentation of appropriate length.

(PS. In the unlikely event that Vintage Brand wins at trial, I am sure that Penn State will appeal.  In that case, the material you produce will be useful in preparing a brief that will defend the verdict in the Third Circuit.)

(UPDATED November 22, 2024: As expected, the jury returned a verdict in favor of Penn State. The completed verdict form is here.)

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 Wednesday, December 11, 2024, 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. 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.

A note about the reference to the “typically excessive theoretical ramblings” of law professors

As a law professor myself, I am highly sympathetic to and appreciative of my colleagues’ work. They are wonderful, brilliant people. Really. I’m not kidding. But as a pretend senior partner in a law firm, I have my doubts about the value of their contributions.

Assignment Two

To:         Junior Associate, Dewey, Cheatem & Howe
From:   Senior Associate, Dewey, Cheatem & Howe
Date:     October 25, 2024
Re:        SF (Airport) v. Oakland (Airport)

I need you to sort the important from the unimportant in an ongoing recent case and put together a summary that I can adapt into a “new case alert” to share with our trademark clients.

Our firm has nothing to do, directly, with the ongoing litigation brought by San Francisco over the City of Oakland’s adopting the name “San Francisco Bay Oakland International Airport” in connection with operating the international airport located in Oakland, adjacent to the San Francisco Bay.

Even though our firm does not have a stake in the outcome of the case, our clients may.  We represent both large and small companies, with modest and large trademark portfolios, and some of them own registrations in marks that include place names. As I’m sure you know, place names that accurately refer to the source of a mark owner’s goods or services are classified as “descriptive” under the Abercrombie spectrum and can be enforced as marks if the owner has collected evidence of acquired distinctiveness, or secondary meaning.  But acquired distinctiveness can be fragile, and can be lost, as the universe of generic marks that were once distinctive demonstrates.  Even if we look only to other airport examples, it’s pretty common to see multiple locations share common place names: Chicago O’Hare and Chicago Midway, for example, and Baltimore/Washington International and Washington Dulles.

Among other questions to think about, what’s different about this case?  Or what’s not different?

As you may know, the plaintiffs in the case recently filed a motion for a preliminary injunction.  The motion and the brief are available here.  The opposition to the motion is available here.  (If there is a reply to the opposition, I’ll share it as soon as I see it.) [Updated on November 6, 2024: I located the reply brief, which is here.] The court has not yet ruled on the motion.

Please take a careful look at both documents and put together a summary of salient points – where the parties agree, where they disagree, what appear to be the key arguments in dispute, and what will likely move the court in one direction or another.  I am guessing, for now, that our clients will be interested in key elements of the factual dispute rather than in any aspects of the law; the Ninth Circuit’s approach to likelihood of confusion seems to be pretty settled. I am also assuming, for now, that our clients are not particularly interested in a prediction as to who should prevail.  The “why?” of the case – why some points seem to stand out – is much more important than the “what will happen?” in the case.

Unfortunately, we don’t have access right now to the affidavits (declarations) that the briefs refer to, so we have to take on faith that the briefs accurately summarize what the witnesses have testified to. 

[Updated on November 11, 2024: Today, the court granted a preliminary injunction in favor of the City and County of San Francisco. The order is here.]

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 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, if you wish, 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 8, 2024, 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 Two 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 Associate, Dewey, Cheatem & Howe
From:   Junior Partner, Dewey, Cheatem & Howe
Date:    September 20, 2024
Re:        Meeting on “The Box”

I need your help preparing me for a client meeting next week. The client has product branding questions, which I believe relate to trademark law.  As you know, our firm does not currently have a trademark law or intellectual property law practice.  As you also know, I’m a corporate lawyer. I have been advising the client on corporate formation and financing issues.  I’m told that you learned trademark law in law school, and I’m hoping that you, as new lawyer, can bring me up to speed on this matter.

Here is what I know so far.  The client is a small, new company called Pied Piper. Pied Piper’s president, who is coming in next week to meet with us, is Richard.  The company’s first product, which the meeting relates to, is apparently called “the box,”  for the time being.  Right now, the product is still in its final stages of development. A public release is planned for some time during the next several months.

The client’s questions have to do with what the product should be called when it is marketed for sale.  Richard has told me that he wants to talk with us about how to ensure that the product (including future iterations, extensions, additions, and so on) can secure appropriate trademark protection as well as build the right sort of marketing and branding identity.  Joining you, me, and Richard at the meeting will be Peggy, the company’s chief marketing officer.

The upcoming meeting is primarily informational, meaning that we need to gather the information that we need in order to give the client the service and advice that they want, and we need to clearly communicate to the client the idea that we are experts in this field.  If we do well, I’m hopeful that Pied Piper will expand its relationship with our firm as it grows.

My lack of understanding of trademark law means that I need you to write up a summary of topics and questions that we should cover in the meeting and an explanation of why those things are important.  Include statutory and case law chapter and verse where necessary.  That will give me a roadmap for running the meeting and the kind of legal authority that I can toss in occasionally to demonstrate our firm’s capabilities with the nuts and bolts as well as the big picture.  I’ll expect you to be there to fill in details as needed, but of course as the relationship partner I will take the lead.  Eventually, I hope to turn the full matter over to you.

Last, I’m sharing with you this “comic book” summary of trademark law that my neighbor, a law professor, found online last week.  I can’t vouch for its accuracy, but it looks like the sort of thing that might be helpful to you in figuring out how to translate legal rules into real world thinking.

Please limit your work product to four pages and have it to me no later than Friday, October 4, 2024, at 3 pm.

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 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 4, 2024, 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.