FEDERAL TRADEMARK REGISTRATION PRACTICE

Spring 2000

Assignment No. 2

Instructions: Attached are: (1) a summary of relevant facts; (2) the summary page of an application for registration of the Mark EXECUTIVE COURT INN' AND CONFERENCE CENTER on the Principal Register under Section I (b) of the Lanham Act which has been published for opposition; (3) the summary page of an application for registration of the Mark EXECUTIVE INN' HOTELS & SUITES Plus DESIGN on the Principal Register under Section I (a) of the Lanham Act, which is currently pending; and (4) several web page printouts.

Please review the attached materials carefully and draft:

1. A Notice of Opposition.

2. An Answer to Notice of Opposition.

Please note: You have to prepare two (2) documents for this assignment.

ALLWORK INIUST BEYOUR OWN - YOU ARE NOT PEIVNIITTED TO WORK WITH ANOTHER STUDENT, OR TO OTHERWISE DISCUSS THE PROBLEM WITH ANYONE ELSE. Once again, no additional evidence should be submitted - base your pleadings on the evidence supplied.

The facts are drawn from currently pending applications. UNDER NO CIRCUMSTANCES ATTEMPT TO CONTACT ANY APPLICANT.

For purposes of drafting your arguments. you must confine yourself to the facts supplied, appropriate case law, Hawes, Trademark Practice Forms, and the Trademark Manual of Examining Procedure (which can be found at http://www.upto.gov/web/offices/tac/tmep/,).

The Notice of Opposition and Answer are due in the Registrar's Office by the close of business on Wednesday, April 26, 2000. Do not place your name anywhere on the documents but please remember to include your exam number on the front page. You are limited to 5 typewritten pages per document, for a total of 10 pages, but do not feel compelled to submit that many pages. The exercise is worth 50% of your final grade.



To: Lowly Associate
From: Lofty Partner
Re: EXECUTIVE COURT INN AND CONFERENCE CENTER Opposition
Date: April 19, 2000


Dear Lowly:

Attached are the following:
 

1. Information sheet about the EXECUTIVE COURT INN AND CONFERENCE CENTER trademark application, owned by The Yard Restaurant, Inc. ("Yard Mark"). This mark was published for opposition on April 4, 2000.

2. Information Sheet about EXECUTIVE INN HOTELS & SUITES Plus Design trademark application ("Client Mark").


Our client, Executive Inn, Inc., is very concerned about the EXECUTIVE COURT INN AND CONFERENCE CENTER mark, and would like to challenge this application. Given that it is already April 19, we will have to get our act together to file tills opposition.

What I need you to do is prepare both a Notice of Opposition and an Answer to that Opposition. The reason I want you to do both, is so that we can start thinking about how The Yard Restaurant, Inc. will respond to our opposition, and anticipate their arguments Please be creative, and put in all arguments that can be made against this mark. At tills point. we do not know all\- facts about the Yard Mark except what is contained in the attached status. Assume, therefore, that The Yard Restaurant. Inc. call only support its mark based on the information stated in its application. Also, all the information we have at this point about the use of the Client Mark is what is contained in the information sheet, and as follows:
 

A. Here is the Client's description of its services on its Web site (whatever that is): "Welcome to the Executive Inn Hotels and Suites website. We are a chain of fine boutique and plaza hotels offering all the comforts of home, all the conveniences of an office and all the facilities of first class hotels. Explore the Executive Experience."

B. The Client operates a chain of hotels throughout Canada, and has two hotels in the US - both in the Seattle area. The chain is well known in Canada, and is breaking into the US market.

C. The client provides high-end hotel and conference center services at its locations.

Please have your draft Notice of Opposition and Answer to me by close of business on Wednesday, April 26, 2000.


CLIENT'S MARK
Word Mark  EXECUTIVE INN HOTELS & SUITES
Goods and 
Services 
IC 042, US 100 101, G & S: hotel, restaurant, banquet, catering, convention, fitness centre, bar and cocktail lounge services. FIRST USE: November; November 30, 1997. FIRST USE IN COMMERCE;  November 30, 1997
Mark Drawing 
Code
(3) DESIGN PLUS WORDS, LETTERS, AND/OR NUMBERS
Design Search Code 260128
Serial Number 75669600
Filing Date  March 26,1999
Owner  (APPLICANT) Executive Inn Inc. CORPORATION CANADA 2900 - 595
Section 44 
Indicator
SECT44
Priority Date January 13, 1999
Disclaimer  NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "HOTELS
AND SUITES" APART FROM THE MARK AS SHOWN
Type of Mark  SERVICE MARK
Register  PRINCIPAL
Live/Dead 
Indicator
LIVE

 

APPLICANT'S MARK

PUBLISHED FOR OPPOSITION


Word Mark  EXECUTIVE COURT INN AND CONFERENCE CENTER
Goods and Services  IC 036. US 100 101 102. G & S: Providing facilities for business
conferences
IC 042. US 100 101. G & S: Hotel and restaurant services
Mark Drawing Code  (1) TYPED DRAWING
Serial Number  75459637
Filing Date  March 31, 1998
Files ITU FILED AS ITU
Published for Opposition April 4,2000
Owner (APPLICANT)YARD RESTAURANT. INC., THE CORPORATION
NEWHAMPSHIRE 1199 So. Mammoth Road Manchester NEW
HAMPSHIRE 03109
Disclaimer NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "INNN
AND CONFERENCE CENTER" APART FROM THE MARK AS SHOWN
Type of Mark SERVICE MARK
Register  PRINCIPAL
Live/Dead Indicator  LIVE

 
 

* * * END OF EXAM * * *