FEDERAL TRADEMARK REGISTRATION PRACTICE
Final Exam-Spring 1999
Professors Susan M. Richey and Lars Smith


General Instructions:

This is a 24-hour, take-home exam composed of two sections worth a total of 50 pts. The completed exam is due in the Registrar's Office by 9:00 am on Tuesday, May 4, 1999. Please read the directions for each section carefully, and double-space your typewritten responses. If you are unable to type your responses, please write legibly.

The exam is open-book, and you may use any written materials you wish in formulating your answers; the exam has been designed so that you can obtain a perfect score by referring only to the coursebook, your class notes, and any materials handed out during class. This is not a group project-you must work alone!

Please remember to place your exam number on your work product.






Section 1 (25 pts.)

Instructions: Below you will find a memorandum from your employer, Lofty Partner, in which he poses a series of questions. Please assume the role of Lowly Associate and draft a responsive memo to Lofty Partner, answering each of the questions posed below. Your responsive memo should not exceed 4 typewritten pages.


MEMORANDUM


To: Lowly Associate

From: Lofty Partner

Re: Screamin' Neatles and Screaming Needles

Date: May 3, 1999

Our new client, Screamin' Neatles, a heavy metal musical group, has approached us for advice with regard to its unsuccessful attempt to register the word mark, SCREAMIN' NEATLES, on the Principal Register. Our client has used the mark since October 2, 1992, to advertise entertainment services, offered in the form of nationwide concert tours. The examining attorney rejected our client's use-based application for registration under § 2(d) of the Lanham Act, based upon a prior registration on the Supplemental Register for the word mark SCREAMING NEEDLES. The registration for SCREAMING NEEDLES is owned by Body Art, Inc., a New Hampshire corporation, and was issued by the USPTO on December 31, 1993, for use in conjunction with the advertising of tatoo and body-piercing services. The examining attorney's refusal to register was affirmed on the merits by the TTAB this past week.

The following facts were a part of the record as considered by the examining attorney and as reviewed by the TTAB.



The following facts were not a part of the record as considered by the examining attorney or as reviewed by the TTAB but were available to our client throughout prosecution of its application for registration.
Please provide me with a memorandum responding to each of the following four questions:

(1) Did the examining attorney commit an error of law by refusing to register our client's mark on the Principal Register based upon a registration on an inferior register, i.e., the Supplemental Register? You should respond to this question with a simple "Yes" or "No."

(2) The client is considering appealing the TTAB's decision and has asked us to advise it as to which forum--the CAFC or the federal district court in New Hampshire--would be the preferable forum for appeal. Please indicate which of the two aforementioned forums you recommend and why.

(3) Alternatively, the client is considering seeking cancellation of the registration for SCREAMING NEEDLES and has asked us to advise it as to any appropriate basis or bases for cancellation that might be raised in such a proceeding. Please provide the requested advice and indicate whether or not the choice of forum--the TTAB or the federal district court in New Hampshire--will affect the basis or bases for cancellation. Explain your reasoning.

(4) Our client has asked us for a strategic opinion as to which of the foregoing options it should pursue first-in other words, should the client first appeal the adverse decision of the TTAB or should it first seek cancellation of the SCREAMING NEEDLES service mark? Please provide the requested opinion and your reasoning in support of that opinion.





Section II (25 pts.)


]Instructions: Below you will find factual background for purposes of preparing a Notice of Opposition and Answer to Notice of Opposition. Prepare the aforementioned pleadings using the format provided in your coursebook and the sample pleadings that were handed out in class. Please do not exceed 4 typewritten pages for each of the two pleadings, for a total of 8 pages.

FACTUAL BACKGROUND


John Jones is the owner of an independent real estate brokerage, Jones & Associates Realty Corp., which he has operated in Concord, New Hampshire, since 1982. He sells real estate primarily in Concord, New Hampshire, and the surrounding towns. John has no affiliation with any regional or national organization that sells real estate.

Being computer saavy, John has registered the domain name, homebrowser.com, with Network Solutions, Inc. Since February 1, 1998, he has maintained a home page at his website where he lists all of the properties in the greater Concord area for which he is the broker. Although the vast majority of potential homebuyers that have purchased homes through John have been residents of New Hampshire, since John has "put up" his home page, a few potential buyers from out of state have visited the site and have purchased property from John.

After talking with the Innovation Clinic at Franklin Pierce Law Center, John decided that he should register his domain name as a service mark. He filed a use-based application on May 1, 1998, with the USPTO for the mark HOUEBROWSER.COK in block letters. His application indicates that the mark is used to advertise real estate listing services in International Class 36. His only use of the mark is on his home page where he displays the mark as follows:

HOMEBROWSER.COM
Listings for Homes In the Greater Concord Region


John's specimen was a printout of his home page.

John's application was initially rejected under the descriptiveness bar in § 2(e), although the examining attorney indicated that he had found no other pending applications or registrations that would warrant a § 2(d) likelihood of confusion rejection. After consulting with an attorney and successfully responding to the Initial Office Action, John received notification that his application had been approved for publication. The application was published for opposition in the Official Gazette on April 10, 1999.

Notice of Opposition was filed by MaxEstate, Inc., on April 29, 1999. MaxEstate is a Nevada corporation with its principal place of business in Los Angeles, California; it is a company that lists homes for sale in communities throughout California, Nevada, New Mexico, Washington, Oregon, and Idaho. MaxEstate does not operate any real estate agencies but merely operates and maintains a computerized listing system that covers the aforementioned western states. Independent real estate agencies in those six states license the right to gain internet access to the listing service from MaxEstate. MaxEstate created its own home page located at maxestate.com and, since January 15, 1999, has been using the page heavily to advertise its services to independent brokerages under the slogan "Your customers will love to home browse on the web." MaxEstate is aware that many of its licensees promote their businesses to the general public under the phrase, "Home Browse on the Web."