MIP Trademark Exam
Trademarks & Deceptive Trade Practices

Spring 1996

Professor Hennessey

Glossary of Slang Terms
 
"Bass-a-Thon" This word is taken from the word "marathon" and means a contest to
catch bass fish.
'Slue Light Speciar' This is a term used at K-Mart to refer to a a 15 minute quick sale.
'Me store sets up a blinking "blue-light" on a pole in the store and
announces throughout the store "Attention, K-Mart Shoppers, there
is an item on sale in the Housewares Department for the next 15
minutes." Shoppers can see the blue light blinking and rush to the
sale.
plaid "Lamar Alexander shirt Lamar Alexander was a presidential candidate this year who
always wore a "trademark" plaid shirt so that he could
identify withy "common people."
"Cash out with Camel Trash" "Cash" out, means to quit or end something. Here, it means,
in effect, to commit suicide.
hula hoops, etc.  These refer to popular fads.
Commercial Speech  The constitutional doctrine discussed in the U.S. Healthcare case on
pages 450-465 and the LL Bean case on pages 547-554 of the
casebook and related cases.

 

General Instructions

This is a two-part open-book exam, based upon two hypothetical sets of facts. You may consult any written materials, but activity on the problem outside the exam room or discussion with any other person during the exam period is prohibited. The value of individual questions is 10 to 20 points. The total is 100 points. Do not spend more time on a problem than it is worth and do not give answers for Questions that are not asked! Be sure to put your exam number on each item which you submit to be graded. Please answer the questions in blue books. Write on only one side of the page and observe margins. Organize your answer before you begin to write and try to keep your answers brief. ANSWER EVERY QUESTION, AND DO NOT SPEND SO MUCH TIME ON ONE QUESTION THAT YOU DO NOT HAVE TIME TO ANSWER ANOTHER. Note to MEP students: do not write "MIP student" or put any marks on your exam booklet which would indicate that you are an MIP student
 


Part I  [50 points]

Facts

Bill Moultrie is a 37 year old sportsman residing in Chattahootchee, Florida, 15 miles from the Georgia state line. In 1988, Moultrie, who was then a grocery clerk at the PigglyWiggly Supermarket in Chattahootchee, won the $50,000 Grand Prize in the the "Seminole Bass-Thon" fishing contest held near Chattahootchee on Lake Seminole. Curbing his desire to use his 1988 winnings to buy a new bass boat to replace his old rowboat, Bill decided to quit his grocery job, buy inventory, and open a bait and tackle shop to sell fishing supplies in Chattahootchee. Bill's first shop (well, actually it was just a shack) was next to the Jim Woodruff Dam which spans the Apalachicola River just north of Highway 1- 10. Keenly aware that his potential customers were "Blue Light Special" cost-conscious shoppers who would stop at WalMart or K-Mart to buy their fishing equipment if the price was right, Bill decided to name his business "Fisherman's Mart." Bill tried to stock the store with the same merchandise sold in the fishing departments at the neighboring Wal-Mart and K-Mart did. Struggling to make his business a success at first, Bills prices were somewhat higher than either K-Mart or Wal-Mart's, but because of his prime location and stories about Bill on WFTV-3, the one local TV station, during the 1989 and 1990 "Bass-a-thons", Bill built up a brisk business and goodwill in the Chattahootchee area. Question 1. [10 points] Based only upon what you know already, is "Fisherman's Mart", for purposes of obtaining a Federal trademark registration, in" interstate commerce" as set forth in Article 1, Section 8, Clause 3 of the United States Constitution? As defined in Section 45 of the Lanham Act, 15 U.S.C. 1127? If yes, why; if not, why not?
 


Additional Facts

Bill moved into a 500 square meter retail outlet and hired 8 employees on the same location as his first shack in January 1991, just before the "Seminole Bass-a-Thon" contest that year. In addition to bait and a full line of tackle and fishing gadgets, Bill has been contemplating selling small boats and outboard motors in the near future, and has started a newsletter for customers from out of town so they can order fishing equipment in advance. Throughout 1990, Bill thought about "registering the name he invented with the government" in order to "keep other people out of his market" He heard from his girlfriend Thelma who works at K-Mart that that store had been forced to remove some imported products from the store in 1988 because of a big trademark lawsuit involving some fancy New York lawyers. In, December, 1995, Bill called the law firm of Filbert & Cashew ['T'n'C"] in Tallahassee, Florida to talk about it. The senior partner at F'n'C, Bobby Rebozo, who knows little about trademark law, called you in and asked you to "handle it.."

Question 2. [10 points] Is one application sufficient to protect Bill's interests in his "mark" or will multiple applications be necessary? Please explain.

Question 3. [10 points] What parts of the information provided above are important for filing a federal trademark application or applications and what additional information about Bill or his business, if any, do you need in order to get a filing date?

Question 4. [20 points] Under Sections 2 and 45 of the Lanham Act, 15 USC 1052 and 1127, what substantive basis or bases, if any, might the trademark examiner who examined the application employ to reject an application for the registration of "Fisherman's Marf 'by Moultrie. What arguments could be made to overcome any such rejection and how successful will those arguments be?

Part II  [50 points]

Holden Williams is an erstwhile actor and former advertising model who now, in his 40's, has become a businessman. For more than a dozen years earlier in his career, Williams had posed in magazine advertisements for cigarette companies. Sometimes he portrayed a race car driver with carbon black on his cheeks, a steely glint in his fearless eyes as he removed his goggles, and a white silk scarf whisked by the wind (Winston Lights). Sometimes he was a taciturn-looking, bronco-bustin' ranch hand dressed in chaps and a sweatsoaked plaid "Lamar Alexander shirt. (Marlboro Regulars). Sometimes he portrayed the gallant hiking partner of a fun-loving Colorado sophisticate in corduroys and hiking boots overlooking a glistening waterfall (KOOL Menthols). Holden acquired his first pack of cigarettes one day during the summer between his fourth and fifth grades of elementary school when he and a friend were on their daily walk on the boardwalk at Newport Beach. That day as every day, copying the older teenagers he saw, he pulled the lever of the cigarette machine with a nonchalant and casual gesture. Of course, he never had put any money into the machine. But this particular day, by a simple twist of fate, a pack of Old Gold Spin Filters and a book of matches tumbled into the tray!. It was that day that he got "hooked" on cigarettes. Now, 30 years later, Williams is an ex-model, an ex-cigarette smoker for the past three years, and a man with a mission: he wants to get other people to stop smoking cigarettes.

As an advertising "insider", Williams has come to believe that keeping young people from starting will be more effective in the battle against death than helping older ones to stop. He firmly believes that this is a matter of public concern. Williams cajoled several of his militant anti-tobacco friends to join him in setting up public awareness campaigns about the dangers associated with cigarette smoking, with a particular emphasis on preventing young people from starting to smoke. One success of the campaign was in getting states at last to enforce their laws which make the selling of cigarettes to minors illegal. In June 1993, after 6 months at the Linda Bloodworth Thomases Center for Tobacco Abuse in Santa Barbara, California and a successful effort to quit smoking himself, Williams organized the first chapter of the "NARC-O-TEENS AGAINST NICOTWE'"' action group during the "Great American Smoke-Out." Williams made an impassioned plea to a group of investors to help him promote his anti-tobacco message. A recurrent theme which emerged from the session was the need for earliest intervention with gradeschool kids who were most vulnerable to the onslaught of tobacco advertising. Joining forces with Wayon Johns, an ex-actor and ex-smoker as well, whose late wife's father was in the candy business, Holden set up a company called the Williams Group. The company came up with a campaign to market candy cigarettes with a 'Tobacco is Deadly for Kids" motif. They developed a line of candy ads called "'Me Right Choice", which "mimicked" cigarette ads, but boldly proclaimed that the candy product was "right" and the tobacco product was "wrong". In what they called a "parody", deliberately copying the exact trade dress of the "Marlboro LONGs" and "Camel LIGHTs" cigarette packages, they created "take-offs" known as "Camel RIGHTs" and "Marlboro WRONGs".

Although the overall look of the cigarette packs were very similar, there were other strategically placed differences as well. For example, instead of "Smoking by Pregnant Women May Result in Low Birth Weight' " a SURGEON GENERAL: 'S WARNING at the bottom of the pack merely says

"Smoking Sucks. Don't get Sucked In."

Another typical warning that "Smoking May Cause Lung Cancer, Emphysema, or Other Respiratory Diseases" now reads:

"COOL DUDE" GENERAL'S  WARNING: Smoking is for LOSERS!

Finally, each pack of "Rights" and "Wrongs" contained a "COLLECTIBLE CARIY' visible through the back of the pack with messages about smoking. For example, "parodying" the "Marlboro Gear" campaign* through which Marlboro merchandised non-tobacco products, the Marlboro WRONGs COLLECTIBLE CARD showed a gravestone with "Marlboro Gear" etched on it, and the slogan:
 


Looking for some Cool Threads? *

Wear Marlboro Gear

You remain "cool" forever

A second says, wryly:
Into Your Marlboro Gear?
GET A LIFE!

* see the illustrations attached to this exam [click here]
 

A similar COLLECTIBLE CARD, rather crudely drawn, shows the spokescharacter "Joe Camel," offering a light to a schoolgirl, as "The Pied Piper of Death." and "Cash out with Camel Trash" *

* see the illustrations attached to this exam [click here]

In a phenomenon similar to hula hoops, hacky-sacks, and baseball cards, Williams Group's "Camel RIGHTS" and "Marlboro WRONGS" candy cigarettes have become the rage not just among the school-age children against whom they were directed, but among over-18 young adults showing their new-found sophistication against smoking and among adult smokers of all ages trying to qui -- all in a matter of two months. Workers trying to quit smoking buy packs of the candy versions to chew in the office or in the factory instead of taking a walk outside for a butt. Sales of Williams Group candy cigarettes in the "take-off' packages have amounted to in excess of $2,000,000 in less than sixty days. Holden has announced that 26 percent of profits win be donated to anti-smoking campaigns.

Needless to say, the tobacco companies, which produce a product which is legal to sell throughout the United States, are not about to let their profitable industries go "up in smoke." Moreover, because the pronunciation of "Camel RIGHTs" and "Camel LIGHTs", and of "Marlboro LONGs" and "Marlboro WRONGs" is identical in many Asian markets which are the major growth areas for tobacco products, - there is a danger that a person asking for the tobacco product might be given the candy one. The manufacturer of Camels is also concerned that the value of the "commercial personality" of its spokescharacter "Joe Camel" is being unfairly exploited, not to mention tarnished, for commercial purposes by the Williams Group. Not only were the candy cigarettes taking over.the under-18 market to which the cigarette companies supposedly do not direct its advertising, but sales of cigarettes in the major markets of adults were plummeting. Mr. Bobby Payeur of Beaver Vally, Pennsylvania, a rabid aficionado of genuine "Marlboro Gear" until the appearance of the "take-off 'COLLECTIBLE CARDS, has written to the manufacturer that he is organizing a campaign against Marlboros because of its manufacturer's "unwillingness to defend its customers' fun-loving adventurous identification with Marlboro Country." Not only the goodwill of the products, but the reputation of the manufacturers is being "stained" by Williams' activities.

Question 5. [10 points] Is the use of the Marlboro and Camel trademarks, trade dress, and spokescharacter "Joe Camel" by the Williams Group "commercial speech" or "noncommercial speech"? Please explain. Also explain the consequences of your conclusion for your analysis of William's liability under principles of trademark and unfair competition law.

Question 6. [40 points] Discuss all the various bases discussed in this course for the two tobacco manufacturers to bring suit against the Williams Group to stop them from using the Marlboro and Camel marks, trade dress, and spokescharacter which might be asserted, and evaluate the likelihood of their success on the merits of each. Based upon your conclusions, state whether a preliminary injunction against Williams Group should issue, if any, and if so, on which basis or bases.


 

Plaintiff's Merchandise Advertisement

Defendants "Collectible Card"

* * * END OF EXAMINATION * * *
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