TRADEMARKS AND DECEPTIVE PRACTICES

Professor Susan M. Richey

Spring 2000-Final Exam

General Instructions: This exam has three sections-a multiple choice section, worth 10 points, a short answer section, worth 44 points, and a short essay section, worth 16 points. The exam is open-book and you may take any written material that you wish into the exam with you. Do not work with any of your classmates during the exam. All statutory references are to the Lanham Act, as amended, unless otherwise indicated. You have 3 hours to complete the exam unless otherwise stated by the proctor.

Section I (Multiple Choice): Select the single best answer for each question. Clearly mark your choice on the exam-you will not be using a Scantron sheet for the final exam.

Sections II and III (Short Answer/Short Essay): Do not use a blue book. Please confine your responses to the lined area of this exam but do not feel compelled to fill the entire lined area. Cite case law in response to questions in Sections II and III only when explicitly asked to do so.
 
 

Section I (Multiple Choice)

Fact pattern for Questions I and 2

Tykes.com is a new start-up company that markets children's toys on the Internet. The company's most successful product is a line of Snapster building blocks that connect with one another by fitting together and snapping into place. On its web page, Tykes.corn asserts that Snapster blocks are "interchangeable" with those of its principal competitor, Tyco, Inc., which has been in existence for several years. Tyco's building blocks are marketed under the trademark, LockBlocks. Tyco maintains a web page, www.tyco.com, on which it advertises its LockBIocks building blocks.

1. (2 pts.) Assume that Tyco has sued Tykes.corn in federal court for infringement of its trade name. Pursuant to which of the following sections will Tyco bring this action?

(a) 32(l)(a)

(b) 32(l)(b)

(c) 43(a)(1)(A)

(d) 43(a)(1)(B)

(e) 43(c)

2. (2 pts.) Assume that Snapster blocks are available only in red and orange and LockBIocks blocks are marketed only in a bright pink color. Although a Snapster block can be connected to a LocksBlocks block for a perfect fit, mixing the two types of blocks leads to a horrendous clash of colors. Tyco includes a claim for misleading advertising in its suit against Tykes.com based upon the disturbing color combination created by attempting to interchange the two types of blocks. Will Tyco need to introduce a survey or other consumer reaction evidence in order to prevail on the charge that the interchangeability claim constitutes misleading advertising and why or why not?

(a) Yes, because the claim is ambiguous with regard to whether it refers to color compatibility or to fit.

(b) Yes, because it is not clear that the claim has been made in interstate commerce.

(e) No, because the claim has plainly been made in interstate commerce.

(d) No, because surveying children yields unreliable results.

(e) No, because the courts understand that survey or other consumer reaction evidence is expensive and time-consuming to generate.

3. (2 pts.) Assume that the plaintiff in a trademark infringement action markets fencing under the trademark "Cyclone" and that the defendant markets the same type of fencing under the trademark "Tornado." The plaintiff objects to the defendant's trademark because the words "cyclone" and "tornado" both refer to a circular storm. For many years, Cyclone fencing has been marketed by catalog, predominantly to ranchers in the Western United States to keep livestock from roaming. Tornado fencing is a new product sold through retail hardware stores in the Southeastern United States, mostly to building contractors for use in fencing off construction sites. Assume that the plaintiff possesses no evidence that the defendant intended to cause confusion or actually did cause confusion. Plaintiff will probably rely heavily on which of the following likelihood of confusion factors?

(a) likelihood that plaintiff plans to "bridge the gap"

(b) similarity of marketing channels

(c) consumer overlap

(d) degree of consumer sophistication

(e) similarity of the marks

4. (2 pts.) The primary distinction between contributory trademark infringement and vicarious liability for trademark infringement is:

(a) a contributory infringement action requires initial proof of direct infringement whereas a vicarious liability case requires no such initial proof.

(b) a contributory infringement action requires no proof of intent whereas a vicarious liability case requires proof of defendant's bad intent.

(c) injunctive relief is the only remedy available to a prevailing plaintiff in a contributory infringement action whereas a prevailing plaintiff in a vicarious liability case may obtain both monetary and injunctive relief.

(d) the defendant in a contributory infringement action is subject to trial as a result of his or her own actions whereas the defendant in a vicarious liability case is subject to trial as a result of the actions of another.

(e) an award of attorneys' fees to the prevailing party is mandatory in a contributory infringement action whereas it is discretionary in a vicarious liability case.

5. (2 pts.) Assume that you represent Acme Bank and your client has requested advice with respect to taking a security interest in certain intellectual property. Specifically, the Bank is considering making a business loan to Webmeister, a start-up Internet company that has not begun to do business. Last week, Webmeister filed a federal intent-to-use application for the service mark "In the Know" to be used to advertise web design services, and the Bank would like to take an assignment of the application. You advise the Bank:

(a) that a security interest in the application will be worthless because it is not accompanied by the assignment of any physical equipment to the Bank.

(b) that a security interest in the application will be worthless because the assignment is in violation of 10.

(c) that a security interest in the application is effective as long as the written assignment document recites that all goodwill symbolized by the mark is transferred as well.

(d) that a security interest in the application is effective as long as the assignment is filed with the United States Patent and Trademark Office and with the appropriate Secretary of State.

(e) that a security interest in the application is effective as long as Webmeister begins offering services under the mark at some point in the future.
 
 

Section II (Short Answer)

6. (2 pts.) Cite the statutory section and subsection setting forth a defense to incontestability that mirrors the common law "intervening junior user" defense.

7. (4 pts.) Describe the evidentiary effect of proving one of the defenses to incontestability.

8. (2 pts.) Cases in which the plaintiff proves post-sale or secondary confusion almost always involve what type of infringing marks?

9. (2 pts.) In light of your response to Question 8, will a prevailing plaintiff in a secondary confusion case be awarded attorneys' fees and why or why not?

10. (4 pts.) Cite a case purporting to articulate a third type of trademark dilution, different than blurring or tarnishment, and briefly characterize this third type of dilution.

Fact pattern for Questions 11 and 12

Dogbone, Inc., a national distributor of dog treats, packages its newest line of chlorophyll-based treats, Greenteeth bones, in a see-through bag with the label shown below:

The clear packaging allows the neon green color of the dog treats to be visible to consumers. Dogbone launched its new product one week ago and declines to spend advertising dollars promoting Greenteeth bones, hoping instead that the unique color of the treats will appeal to consumers when they see the treats on the grocery store shelf. In fact, early market research indicates that many consumers have purchased the new product because they noted its striking and unusual color while shopping.

The tests referenced on the label reliably substantiate the claim made with regard to removal of tartar from the teeth of dogs that chew Greenteeth bones but they do not indicate that the removal of tartar eradicates bad breath in dogs. Moreover, significant scholarly research exists to show that bad breath in dogs cannot be traced conclusively to tartar; the research does indicate that bad breath correlates to unrelated factors, such as a dog's age and overall health.

A competitor has filed a federal complaint against Dogbone for misleading advertising under 43(a)(1)(B), and Dogbone has counterclaimed for unregistered trade dress infringement under 43(a)(1)(A) because the competitor has just begun to market its neutralcolored bones in a neon green bag.

11. (4 pts.) Articulate a factual argument that the claim "Do away with doggie bad breath for hours!" is literally false.

12. (6 pts.) Is Dogbone likely to succeed in asserting protectible trade dress rights in the neon green color of Greenteeth bones? Briefly explain your response, citing all relevant U. S. Supreme Court precedent.

Fact pattern for Questions 13, 14, 15, 16, and 17

A California company, known for designing and marketing GRANDSLAM baseball bats for professional sports teams, has sued SidCo. in federal district court in California for trademark infringement based upon its use of the phrase "grand slam" as a metatag on SidCo's web page. SidCo markets baseball caps for youth under the trademark SID'S LIDS and advertises those caps on its web page. The phrase "grand slam" is defined as "a home ran hit while the bases are loaded, i.e., when a runner is on each of the three bases." SidCo maintains that it uses the disputed metatag because it wants to market caps to young baseball enthusiasts who might type the phrase into a search engine.

13. (2 pts.) What recent Ninth Circuit decision contains dicta that would support SidCo's defense of its use of the metatag "grand slam"?

14. (2 pts.) On what defense--often asserted in trademark litigation--is SidCo relying if it cites the aforementioned case?

15. (2 pts.) SidCo is not located in California; it conducts no business in that state; and, other than maintaining its web site, Sid Co does not advertise its product. SidCo's web site contains images of SID'S LIDS with a corresponding price list. Additionally, the site gives a tollfree telephone number that customers may use to order merchandise from SidCo. Given that customers cannot order SID'S LIDS over the Internet, suggest one other activity that might be conducted on SidCo's web site that would support an argument for in personam jurisdiction over SidCo in California federal district court.

16. (2 pts.) Assume that, one week ago, SidCo adopted the domain name www.grandslam.com for its web site in order to have something to bargain with in its litigation against the California company. If the California company decides to amend its federal complaint against SidCo, what section and subsection of the Lanham Act is the California company most likely to invoke to support a cause of action based on the domain name. (Do not respond with the name of the legislation establishing the cause of action--indicate where in the Lanham Act it is codified.)

17. (4 pts.) Assume that the court establishes in personam jurisdiction over SidCo in the action referenced in your response to Question 6 and that the California company prevails in the action. Assume further that the California company is unable to prove the amount of sales associated with SidCo's complained-of activity and the company is unable to quantify any business losses it has suffered as a result of SidCo's complainedof activity. Identify the types of monetary relief that are potentially available to the California company.

Fact pattern for Questions 18, 19, and 20
Lou Jacobs, a contortionist and internationally-known clown, died in 1992 during a circus performance when an elephant accidentally sat on the midget car he was driving. Jacobs was famous for originating the miniature automobile routine in which he would squeeze himself into a tiny car and drive around the ring while the circus animals performed. Indeed, it was during such a routine that Jacobs met his untimely demise when an elephant mistook his miniature car for the drum on which the elephant was trained to sit.

Shortly after his death, the Jacobs' Estate granted a royalty-free exclusive license to Ringling Bros.-Barnurn & Bailey Clown College for use of Jacobs' name and image in its advertising. Since that time, the College has used a celebrity photo along with Jacobs' name on posters promoting the College's services. The posters are distributed nationwide in order to recruit promising young people who want to learn to be circus clowns.

Celebrity photo of Lou Jacobs 

Recently, Zippy's Driving School, a Southern California chain of schools dedicated to teaching student drivers, has run the print ad pictured below in newspapers with circulation covering the entire Southwestern United States. The ad utilizes Jacobs' image without the permission of the Jacobs' Estate.
 
 

18. (4 pts.) The state of California recognizes a descendible right of publicity upon compliance with the proper formalities--assume that the Jacobs Estate has complied with the requistite formalities. Shortly after the ad appears, the Estate sues Zippy's in California federal district court, invoking the state-created right of publicity and the Lanham Act. Articulate the interests that each cause of action seeks to protect.

19. (2 pts.) Zippy's argues that the clown makeup obscures Jacobs' identity as an individual and that, because Jacobs' name is not used in the ad, his identity has not been misappropriated in violation of the right of publicity. The Estate counters with the argument that the distinctive clown makeup and costume worn by Jacobs', in addition to the miniature car pictured in Zippy's ad, effectively identifies Jacobs. Cite one case that supports the Estate's argument.

20. (2 pts.) Characterize the defense to the Lanham Act claim contemplated by Zippy's, if it argues that its use of Jacobs' image was necessitated because Jacobs was the quintessential driving clown.
 
 

Section III (Short Essay)

21. (16 pts.) Jake Steinfeld describes himself as "the first nationally-recognized fitness trainer," and he has a current client list that includes many stars in the film and television industry in Southern California. In addition to providing fitness training services, Steinfeld markets a line of fitness products nationwide, including weight benches and home gyms, under the trademark "The Body by Jake." The trademark is federally registered for use in conjunction with the sale of fitness equipment and the registration has been incontestable for the last 4 years.

Fitness industry experts estimate that "The Body by Jake" trademark, used to market fitness equipment for the past 10 years, is among the world's top 5 fitness brands and is recognized by more than 150 million out-of-shape Americans.

The Body by Jake fitness equipment is marketed almost exclusively through infomercials (program-length commercials) shown on national television. Virtually all of the products sold under this trademark are delivered to the customer with a short videotape of Jake Steinfeld demonstrating the proper way to use the equipment in question. Steinfeld also sells motivational videotapes under the mark "The Body by Jake" that show Steinfeld coaching several of his celebrity clients towards a fit and healthy lifestyle.

Recently, Steinfeld became aware that Jacques Lendreau, a marketer of adult entertainment, has begun to produce pornographic films under a logo similar to Steinfeld's logo pictured above, with the only major difference being in the use of the name "Jacques" as opposed to "Jake." Lendreau's films are distributed through "art houses," i.e., adult movie theatres, across the United States. Amusingly, Lendreau gained access to old film clips of a number of Steinfeld's celebrity clients who, when they were still just struggling actors, appeared in adult entertainment films themselves. Inevitably, one or two of these clips appears in each of Lendreau's films.

Steinfeld has sued Lendreau in California federal district court for federal dilution of his trademark "The Body by Jake." Analyze Steinfeld's chances of prevailing against Lendreau in the action, addressing particularly the issues of tarnishment and parody.
 
 

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