FEDERAL TRADEMARK REGISTRATION PRACTICE
Professors Susan M. Richey and Lars Smith
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
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.
To: Lowly Associate
Re: Screamin' Neatles and Screaming Needles
Date: May 3,
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.
- Since its founding, Body Art has marketed its SCREAMING NEEDLES services
from a variety of storefronts throughout New England.
- Body Art's date of first use of its service mark (first use anywhere and
first use in commerce) is November 31, 1992.
- Body Art has not yet filed a § 8 affidavit for its service mark
- Many of Screamin' Neatles' fans sport tatoos or pierced rings on various
parts of their bodies as indicated by promotional posters showing
concert-crazed fans, submitted as specimens in support of our client's
application for registration.
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.
- Our client has received no complaints or other indications from fans that
they obtained a tatoo or body piercing from Body Art in the belief that the
SCREAMING NEEDLES service was sponsored by, endorsed by, or affiliated with
- Body Art's service is quite expensive, with tatoos ranging in price from
$500 to $2000 and body-piercing and the associated rings ranging in price from
$250 to $400.
- The service mark SCREAMING NEEDLES always appears in conjunction with the
owner's trade name, Body Art.
- Several other unregistered uses are made of similar phrases, e.g.,
SCREAMING NEEDLES as the name of a chain of stores that specializes in the
sale of turbo-powered sewing machines; SCREECHING NEEDLES as a type of compass
which emits a high-pitched sound when the user changes direction; SCREAMING AT
NEEDLES as the name of a psychotherapy service aimed at helping individuals
who are phobic to injections; and STREAM AND NEEDLES as a brand of air
freshener incorporating the scent of woodland streams and pine needles.
Please provide me with a memorandum responding to each of the following four
(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
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.
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:
Listings for Homes In the Greater
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."