Final Exam-May 4,1998

This exam has two sections-a multiple choice section and a short answer section. Please place your answers on the exam itself; do not use a blue book. The exam is open-book and you may take any written material 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 unless otherwise indicated.

Multiple Choice (28 pts. total)-Choose only one answer from the alternatives presented for each question and circle the letter corresponding to that answer. If you believe that more than one answer is correct, choose the answer that represents the best of the alternative answers.

1. Gerald R. Ford, a former U. S. President famed for his physical ineptitude, produced and starred in a workout video featuring exercises to help clumsy people become more graceful. The video entitled, Not for the Barishnikovs Among Us, featured no celebrities other than Ford himself and did not include dance movements, with the exception of a few stretching exercises used by professional ballet dancers. Ballet legend, Mikhail Barishnikov, objected to the use of his name in the title of the video without his consent.

(4pts.)1.1 If Barishnikov sues Ford under 43(a) for the use of his name in the title, Barishnikov is likely:

(A) to prevail because alternative avenues of expression were available to Ford, i.e., he could have used a number of alternative titles.

(B) to prevail because the association of his name with clumsy people is likely to embarrass and humiliate him.

(C) to lose because he is a public figure.

(D) to lose because the title has minimal artistic relevance to the content and does not explicitly mislead as to the source or content.

(E) to prevail because it is express reverse passing off.

(4pts) 1.2 Assume that Ford becomes aware of Barishnikov's displeasure before distribution of the video and attempts to win his approval by including a statement in the credits thanking Barishnikov for his enthusiastic support of the project. If Barishnikov sues Ford under 43(a) for the statement in the credits, Barishnikov is likely:
(A) to prevail because the statement is likely to confuse viewers into believing that Barishnikov sponsored or endorsed the video.

(B) to prevail because the statement is likely to confuse viewers into believing that Barishnikov appeared in the video.

(C) to lose because he is a public figure.

(D) to lose because For& First Amendment rights outweigh Barishnikov's First Amendment rights.

(E) to lose because no one reads the credits anyway.

2. Ditto Co. originated its most recent product by analyzing and copying the chemical components of a popular plant food for ferns known as "Jungle Rama," marketed by Dow, Inc. The formula for Dows more expensive product is not protected by patent, copyright, or trade secret. Dittos fern food, 'IushMush," contains the following claim on its label: "LushMush--Plant Food For The Future! Tests prove that ferns grow taller with LushMush food than with "Jungle Rama," food." The tests referred to are tests utilized by hedge growers and measure only the fullness or bushiness of the plant.

(4pts.) 2.1 If Dow sues Ditto under 43(a)(1)(B) for the claim on the "LushMush" fern food label, Dows best argument is:

(A) that comparative ads are disfavored generally.

(B) that the tests referred to do not establish the proposition for which they are cited.

(C) that the claim does not specify how much taller ferns fed with "LushMush" food grow and, therefore, is misleading.

(D) that a copyist cannot legally refer to the product that it has copied in its advertising.

(E) that Ditto failed to include a disclaimer on its label indicating that it was not affiliated with Dow, the manufacturer of "Jungle Rama," plant food.

(4pts.) 2.2 The claim, "LushMush--Plant Food For The Future!," viewed by itself, i.e., without any reference to plant growth, is:

(A) actionable under 43(a)(1)(B) because no tests substantiate this claim.

(B) actionable under 43(a)(1)(B) because it is ambiguous and, therefore, misleading.

(C) actionable under 43(a)(1)(B) because the claim is likely to be material to purchasing decisions.

(D) not actionable under 43(a)(1)(B) because it is puffery.

(E) not actionable under 43(a)(1)(B) because no competitors are mentioned in the claim.

3. Slick Co. manufactures unauthorized copies of famous brands for sale in flea markets throughout the nation; its most popular products are athletic shoes bearing a copy of Nike, Inc.'s, swoosh mark, federally-registered for use in conjunction with athletic shoes. Nike, having successfully sued Slick for civil counterfeiting last year, seeks an ex parte seizure order and conducts a raid of Slicks warehouses, seizing only barbeque aprons bearing unauthorized copies of the Nike swoosh mark. Nike has never sold barbeque aprons nor has it ever licensed anyone else to do so.

(4pts.) 3.1 If Nike successfully sues Slick under 32(l)(a), having proved a likelihood of confusion with regard to the seized aprons and damages in the form of a reasonable royalty:

(A) the court will award a permanent injunction, mandatory treble damages, and mandatory attorneys' fees.

(B) the court will award a recall order, mandatory treble damages, and mandatory attorneys! fees.

(C) the court is likely to award a permanent injunction, nonpunitive discretionary enhanced damages, and discretionary attorneys' fees.

(D) the court is likely to award a permanent injunction and discretionary punitive damages but no attorneys' fees.

(E) the court is likely to award a permanent injunction only.

(4pts.) 3.2 What is the biggest obstacle to imposing criminal liability on Slick based on the results of the raid?

(A) inability to prove that Slick knew that the swoosh mark was a registered trademark.

(B) inability to prove the trafficking element of the crime.

(C) inability to prove that Slides actions resulted in a likelihood of confusion because individuals who frequent flea markets know they are not buying "the genuine article."

(D) inability to prove that Slick's use of the swoosh mark was unauthorized.

(E) inability to prove that the seized items were counterfeits within the meaning of the Trademark Counterfeiting Act of 1984.

(4pts.) 4. You are counsel to a local auto repair shop specializing in repair of the classic Volkswagen (VW) Beetle automobile, popularly known as "The Bug"; your client is thrilled by VW's introduction of the new version of the Beetle automobile as he thinks it will ensure the viability of his business for years to come. Your client has placed neon signage on the side of his facility which reads "The Bug Shop"; below that the statement, "We specialize in the repair of VW BEETLES," is painted on the side of the building in black letters, with the exception of the words, "VW BEETLES," which appears in stark white letters twice the size of the other lettering on the building. You advise your client:

(A) to dispose of the neon sign and rename his business without using the words "Bug," "Beetle," "VW" "Volkswagen," or any other trademarks belonging to Volkswagen, Inc.

(B) to paint over the lettering on the side of the building and repaint the statement using the same size and coloring for all letters.

(C) to include an additional painted statement on the building, as prominently as possible, indicating that the business is an independent repair shop

(D) to allow you to review all his advertising, including his ad in the yellow pages of the phone book, for potential trademark infringement problems.

(E) all of the above.

Short Answer (32pts. total)-Please confine your responses to the lined area, but do not feel compelled to fill the entire area. Cite case law only if the question specifically asks you to do so.

(2pts.) 5. According to Allen Greenberg, Assistant General Counsel for The Coca-Cola Company, what well-known trademark of The Coca-Cola Company is not federally registered?

(4pts.) 6. Offer an explanation as to why The Coca-Cola Company declines to mount a federal dilution action against the owner of the domain name "," a website devoted solely to opinion criticism of Coca-Cola beverages and The Company itself. Keep in mind the elements of a 43(c) cause of action and the defenses thereto.

(4pis.) 7. In a reverse confusion case, is the defendant's intent in adopting the complained-of mark generally relevant to the trademark infringement analysis and why or why not?

(4pts.) 8. If a plaintiff/licensor of a trademark is seeking to preliminarily enjoin a former licensee's use of the mark and it establishes a likelihood of success on the merits of its infringement claim, which one of the additional criteria for issuance of a preliminary injunction is deemed proved as a matter of law and why?

(8pts.) 9. Assume that a defendant is charged with Infringement of the incontestable trademark, "JONES," registered for use in conjunction with cough drops, and assume that the word "Jones" is a well-known surname in the U.S. Can the defendant offer proof that the mark is merely a surname as a defense to the validity of the mark and why or why not? Cite applicable case law. Can that defendant offer proof that the mark is merely a surname in any other context of the litigation? Explain.

(10 pts.) 10. Ken and Barbie's Strip-A-Gram Service, founded this past year and located near a major airport in Los Angeles, advertises in The Los Angeles Times that it will provide a male or female stripper, dressed (at least initially) to look like the "Ken" or "Barbie" fashion dolls sold by Mattel, Inc., for parties, etc. Mattel has owned incontestable trademark registrations for the trademarks "Ken" and "Barbie" for use in conjunction with fashion dolls since 1965 and has expended at least $ 20 million in advertising its "Ken" and "Barbie" dolls in the last 10 yrs. alone. The dolls are sold in retail outlets nationally, primarily to the parents and caretakers of children ranging in age from 2 to 10 yrs.; sales of the dolls gross approximately $300 million a year for Mattel. Analyze Mattel's chances of obtaining an injunction under 43(c) against Ken and Barbie's Strip-A-Gram Service, addressing in particular tarnishment and parody.