Trademark Prosecution Quiz

February 17, 1997

Each of the five questions below has two subparts; most of the subparts can be answered with one or two sentence responses. You do not need to cite any case law in response to the questions below but you may if you wish. You will be given a copy of the Lanham Act, which is the only course material to which you may refer during the quiz. Read carefully, write legibly, and remember that brevity is a virtue.

(1) Sticky Corp. has had an Idaho state trademark registration for the mark "GLOX" for floor wax for several years. Two months ago, the same corporation filed an application for registration of "GLOX" for floor wax under section 1(a) of the Lanham Act but made no mention of the Idaho state trademark registration in the application or accompanying papers. You are the Examining Attorney in the USPTO assigned to process this application, and, while conducting a trademark search, you discovered the existence of the Idaho state trademark registration issued to Sticky Corp. for "GLOX"

(a) What section of the Lanham Act prompted you to conduct a trademark search and what were you attempting to learn from the search?
(b) How important is the Idaho state trademark registration in determining whether or not "GLOX" is federally registerable for floor wax and why?

(2) Streusel BASF, a German company, received a German service mark registration for the term "FLUGELBAUM" for restaurant services on February 3, 1997. On February 11, 1997, Streusel applied for a United States federal service mark registration for "FLUGELBAUM" on the Principal Register, submitting a certified copy of its German registration and stating its bona fide intent to use the mark "FLUGELBAUM" in the United States for restaurant services. Germany is a party to the Paris Convention for the Protection of Industrial Property and has been for many years.

(a) Under what section of the Lanham Act does Streusel seek registration of its mark?
(b) Will Streusel be required to state a date of first use in commerce or to provide specimens of use in order to obtain a United States federal registration for its mark?
(3) The Natural Way, Inc., has developed a new fiber-based alcoholic beverage which the company calls "BAMBOOZLE." The drink is made from bamboo juice but has not been marketed yet due to the company's desire to perfect the fermentation process. Although The Natural Way does not plan to put the product on the market for at least two years, the company has filed an application to register the trademark "BAMBOOZLE" for wine under section 1(b) of the Lanham Act. The USPTO issues an initial Office Action invoking section 2(e)(1) of the Lanham Act and reasoning that the proposed mark is a combination of two words that merely describe the ingredients and characteristics of the product. The Examining Attorney cites the dictionary definition of 'booze" as slang terminology for an alcoholic beverage and takes the position that the mark is little more than a combination of the descriptive terms "bamboo" and 'booze," although he admits that the word "bamboozle" is defined in the same dictionary as meaning "to trick or deceive."

(a) What is the strongest argument The Natural Way can make in responding to the Office Action?

(b) Should The Natural Way attempt to amend its application at this point to seek registration on the Supplemental Register and why or why not?

(4) Since the beginning of 1993, "NIAGARA FALLS" seltzer water has been marketed vigorously throughout the United States by a Texas partnership which obtains the raw product from the Rio Grande River and then processes and bottles it at the partnership's headquarters in Houston. When they chose the mark "NIAGARA FALLS," the partners knew that bottled processed water from the famous falls had been sold for years to tourists in gift shops located on either side of the falls. Within three months of introduction of the partnership's product, sales of "NIAGARA FALLS" seltzer water were booming, and newspapers reported on the unprecedented success of the product, primarily with college age students. According to the news reports, the product's popularity was the result of its excessive bubbliness which led to a resurgence of burping contests on college campuses nationwide. The allure of such contests continues today as does widespread conspmption of the product. Approximately six months ago, the partnership filed an application for federal registration of the mark "NIAGARA FALLS" for seltzer water. The USPTO has issued an initial Office Action refusing registration on the Principal Register, alternatively, under sections 2(a) and 2(e)(3) of the Lanham Act. Specifically, the Examining Attorney has stated that the primary significance of the mark is geographic and, because the seltzer water does not come from Niagara Falls, the mark is deceptive or, at least, primarily geographically deceptively misdescriptive of the goods.

(a) What is the partnership's best argument that the mark is not deceptive?

(b) Assume for purposes of this subpart that the mark is primarily geographically deceptively misdescriptive. Should the partnership argue for registration on the Principal Register despite the language of the first sentence of section 2(f) of the Lanham Act and why or why not?

(5) Saltridge Farms, Inc., seeks federal registration under section 1(a) of the Lanham Act for the shape of its new snack food product, which it has marketed nationwide for the last two months. The product is sold under the name "TOP HAT" crackers; the crackers are flat and shaped like a gentleman's formal top hat. The product is sold in a box which bears a picture of a "TOP HAT" cracker being lowered into a container of dip and the accompanying phrase, "Super dipping capacity!" The crackers are manufactured through a process for making custom-shaped crackers that is the subject of a utility patent owned by Saltridge Farms. The patent acknowledges that crackers made in custom shapes, such as the shape of gloves, canes, and top hats, generally require more machinery and take longer to make than do traditional crackers made in simple shapes, such as circles, triangles and squares. In an initial Office Action, the Examining Attorney cites Saltridge Farms' utility patent and the phrase on its packaging as support for her refusal to recommend the requested registration. Specifically, the Examining Attorney finds the proposed mark to be unregisterable for de jure functionality, and, in the alternative, de facto functionality without a showing of distinctiveness.
(a) What arguments should Saltridge Farms make in response to the refusal for de jure functionality?
(b) Assume for purposes of this subpart that the cracker shape is not de jure functional; assume also that the shape is not inherently distinctive nor has the cracker been on the market long enough for the shape to have acquired distinctiveness. Under what section of the Lanham Act can Saltridge Farms proceed at this time to obtain a registration of the product shape and what will be the test of registrability?
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