TRADEMARKS AND DECEPTIVE PRACTICES
Final Exam-May 5,1999


Professor Susan M. Richey

General Instructions: This exam has two sections-a multiple choice section, worth 15 pts., and a short answer/short essay section, worth 55 pts., for a total of 70 pts. The exam is open-book and you may take any written material that 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. You have two hours to complete the exam unless otherwise instructed by the proctor.

Section I (Multiple Choice): Use the Scantron answer sheet provided and select the single best answer for each question. Clearly mark your choice on the Scantron answer sheet. Be certain to follow the proctor's instructions for filling out the Scantron answer sheet; misplaced marks may be read by the scanning machine as incorrect answers. Place your exam number on the Scantron sheet.

1. (2.5 pts.) The United States' First Lady, Hillary Clinton, is suing Roland Sweeney, claiming that his recently-released novel, Hillary's Trials, gives the public the false impression that the novel is about her recent much-publicized marital problems. In fact, the novel, is a biographical account of the exploits of Sir Edmund Hillary, an explorer who became one of the first human beings to scale Mt. Everest and to pursue mechanized travel to the South Pole. Sweeney has moved for summary judgment. The motion:

(a) will be granted if Sweeney makes a showing that the book-buying public is not likely to believe that the book's title refers to Mrs. Clinton.

(b) will be denied because it is common knowledge that Mrs. Clinton's mother named her after Sir Edmund Hillary.

(c) will be granted because the title has minimal artistic relevance to the content of the book and does not explicitly mislead as to the source or content.

(d) will be denied because Mrs. Clinton's right to privacy trumps the author's First Amendment right of freedom of expression.

(e) will be denied because the title constitutes reverse passing off.

2. (2.5 pts.) In the early 1990's, Smithkline Beecham Corp., a consumer pharmaceutical company, ran an advertising campaign for its nonprescription product, TUMS antacid. TUMS antacid is designed to reduce heartburn by relying on a calcium carbonate formula; it lacks the aluminum salts found in competing over-the-counter products, such as J & J Merck's MYLANTA antacid. Smithkline ran a series of television commercials in which a voice-over declared TUMS antacid to be "aluminum-free" as the screen depicted a series of competing products, including MYLANTA antacid, along with a listing of each such product's ingredients. At that time, it was a publicly-held misperception that the ingestion of aluminum causes Alzheimer's disease. In this particular case, survey evidence directed to the whether or not the consuming public is confused about the safety of MYLANTA antacid and other products containing aluminum salts is:

(a) unimportant because the explicit claims regarding ingredients are literally false.

(b) important because the explicit claims regarding ingredients are literally true but misleading because they prey upon a publicly-held misperception.

(c) unimportant because the advertisement does not explicitly compare the efficacy of TUMS antacid to MYLANTA antacid.

(d) important because TUMS antacid may not be effective in reducing heartburn.

(e) unimportant because the advertisement does not explicitly state that MYLANTA and other antacids containing aluminum salts cause Alzheimer's disease.

3. (2.5 pts.) SNITCH, an activist environmental group responsible for a year-long protest known as "The Chugging Chainsaw," published a newspaper advertisement in April 1999, deploring recent U. S. Forest Service policies. The advertisement depicts the well-known Forest Service symbol, Smokey the Bear, with a chainsaw partially hidden behind his back, and the legend, "Say it ain't so, Smokey." The remainder of the print ad consists of text criticizing the Forest Service's management of public lands. The Forest Service has initiated a federal trademark dilution action. What statutory defense is SNITCH most likely to assert?

(a) 43(c)(4)(A)

(b) 43(c)(4)(B)

(c) 43(c)(4)(C)

(d) 33(b)(1)

(e) 33(b)(7) 


Fact situation for Questions 4 and 5

Microsoft, Inc., a famous computer software manufacturer, has filed a 43(c) action against a linen manufacturer that specializes in production of durable fabrics woven of microscopic threads that are unusually soft to the touch. Microsoft challenges the linen company's use of the designation "microsoft" in advertising related to products such as bath towels, bed sheets, and curtains. The linen company has responded to the filing, asserting that its use of the designation is protected by the First Amendment.

4. (2.5 pts.) Based upon the limited facts that you have been given, what do you understand to be the theory upon which the computer software manufacturer is relying?

(a) blurring

(b) tarnishment

(c) dilution of the type discussed in Deere & Co. v. MTD Products, Inc.

(d) misleading advertising claims

(e) none of the above

5. (2.5 pts.) Assume that the trial judge enters summary judgment for the computer software manufacturer in the 43 (c) litigation and that the judge is able to avoid a full trial, in part, because the linen company's intent is not placed in issue. In such a circumstance, the court is likely to award which of the following remedies?

(a) a permanent injunction and discretionary attorney's fees

(b) a permanent injunction and mandatory attorney's fees

(c) a permanent injunction, mandatory enhanced damages, and discretionary attorney's fees

(d) a permanent injunction, mandatory treble damages, and mandatory attorney's fees

(e) a permanent injunction


6. (2.5 pts.) In Pebble Beach Co. v. Tour 18 1, Ltd., a trade dress infringement action against Tour 18, a golf course devoted to replicas of famous golf holes, the trial court was faced with determining the efficacy of disclaimers which disavowed any association, affiliation or endorsement of Tour 18 by the owners of the courses whose holes had been copied. The court criticized such disclaimers in defendant's promotional materials for their miniscule print and inconspicuous placement but did not find the same problem with the disclaimers as they appeared on the tee box signs at each individual hole. Nevertheless, the court held that the disclaimers on the tee box signs did not help the defendant avoid liability because they did not alleviate:

(a) foot-in-the-door confusion.

(b) secondary confusion.

(c) reverse confusion.

(d) actual confusion.

(e) none of the above.

7. (EXTRA CREDIT--2.5 pts.) Judge Paul Michel of the U. S. Court of Appeals for the Federal Circuit, in his lecture on appellate advocacy in trademark cases, cites a rule that represents the percentage of cases in which an appellate judge will have a strong inclination, prior to oral argument, as to which way the case should be decided. That rule is:

(a) the 50 %rule.

(b) the 60 % rule.

(c) the 70 % rule.

(d) the 80 % rule.

(e) the 90 % rule.


Section II (Short Answer/Short Essay): Please confine your responses to the lined area, but do not feel compelled to fill the entire lined area. Cite case law only if the question specifically asks you to do so.

Fact Situation for Questions 8 and 9 .

The first ZAMBONI ice-resurfacing machine was put into commercial production in 1950 by Frank J. Zamboni & Co., Inc., to provide a smooth ice rink surface for ice skating sports. The machine scrapes the ice, removes the ice and snow covering the rink surface, and stores, then melts, the snow and shavings to wash down the rink surface, for a smooth sheet of ice. The company, based in Southern California, currently sells ZAMBONI ice-resurfacing machines to commercial rinks and sports departments of academic institutions, for prices in excess of $120,000 a machine; the company's annual revenue for the sale of resurfacing machines is approximately $20 million. At present, the company is in the process of expanding its product line to include toy ZAMBONI ice- targeted at children between the ages of 8 and 12 yrs., and apparel, targeted at ice hockey fans.

SnowCo, a New England company, has begun to market BAMBINI scrapers, identical in overall appearance to the ZAMBONI iceresurfacing machine, but considerably smaller and with a different purpose, i.e., the scraping of sidewalks to create an ice and snow free surface for pedestrians. BAMBINI scrapers are purchased primarily by town managers throughout the northeast, although several New England colleges have recently expressed an interest in the machines for improving safety on campus walkways. The cost of a BAMBINI scraper is approximately half that of a ZAMBONI ice-resurfacing machine. Although no customers who wanted to purchase an iceresurfacing machine have mistakenly sought out SnowCo, Frank J. Zamboni & Co. has received inquiries from some of its university customers as to whether or not the company also manufactures the BAMBINI scraper.

Frank J. Zamboni & Co., founded by an Italian immigrant of the same name, objects to SnowCo's use of the word BAMBINI, an Italian word meaning "babies," to market a small machine so closely related to its ice-resurfacing machines. Frank J. Zamboni & Co. has sued SnowCo under 32, citing its incontestable federal registration for the word mark ZAMBONI for use in conjunction with the sale of iceresurfacing machines. SnowCo was aware of the federal registration for ZAMBONI when it adopted its own mark BAMBINI, for which no federal registration exists. SnowCo's trade name always appears prominently in conjunction with the mark BAMBINI.

8. (25 pts.) Analyze the likelihood of confusion issue and determine which party should prevail in the litigation.

9. (10 pts.) For purposes of this question only, assume that for many years the ZAMBONI ice-resurfacing machine was the only comerciallyavailable machine of its kind. Although other brands are now available, television commentators covering National Hockey League events or the Winter Olympic Games commonly announce the entrance of any ice-resurfacing machine onto the rink with the phrase, "Here comes the Zamboni!" What defense can SnowCo use in the litigation to counter the evidentiary effect of the plaintiff's incontestable registration? Cite specific statutory authority.

Fact situation for Questions 10 and 11

Miami Lens is a contact lens manufacturing company whose neon-tinted 'lenses are wildly popular among teenagers--indeed, the company has started a nationwide fad. EyeDye, Inc., developed and sells the dye used by Miami Lens to tint its line of neoncolored lenses and, because the dye is only useful for tinting lenses, signed an agreement with Miami Lens that it would not sell the dye to any other lens manufacturer. EyeDye wants to recoup its research and development costs rapidly and, so, has begun to sell the neon dyes to Pizazz, a company that professes to be involved in the fashion industry. Miami Lens has discovered that Pizazz is selling neon-tinted contact lenses and has charged Pizazz with infringement of its neon lens colors under 43(a), and EyeDye with contributory trade dress infringement.

10. (15 pts.) EyeDye says that it is baffled as to why Miami Lens is charging it with contributory liability because EyeDye certainly did not suggest or encourage Pizazz to compete with Miami Lens and, in fact, EyeDye did not ask and did not actually know what Pizazz intended to do with the dye. Will the foregoing defense insulate EyeDye from contributory liability if trade dress infringement by Pizazz is proven? Cite relevant case law.

11. (5 pts.) If brand-conscious teenagers purchase neon-tinted lenses from Pizazz because they are significantly cheaper than Miami Lens lenses and, when worn, cannot be easily distinguished from Miami Lens lenses, this may indicate the presence of what type of confusion in the marketplace?